Radio Syndicate, Inc. v. oszie.com c/o Osvaldo Tarula
Claim Number: FA0910001287149
Complainant is Radio Syndicate, Inc. (“Complainant”), represented by Helen
Yu, of Yu Leseberg, A Professional Law Corporation,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pocosperolocos.com>, registered with Dotster.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hector A. Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 5, 2009.
On October 6, 2009, Dotster confirmed by e-mail to the National Arbitration Forum that the <pocosperolocos.com> domain name is registered with Dotster and that the Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 3, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on November 3, 2009.
An Additional Submission was received from Complainant on November 10, 2009 that was determined to be timely and complete pursuant to Supplemental Rule 7.
An Additional Response was received from Respondent that was determined to be timely and complete pursuant to Supplemental Rule 7.
On November 11, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hector A. Manoff as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Pocos Pero Locos is highly successful a radio
show produced and syndicated by Complainant since 1999, and it is currently
syndicated in thirty-eight (38) markets across the
2. Complainant asserts that it has rights in the “Pocos Pero Locos” trademark. Complainant filed for this trademark on July 2, 2009, but began using the mark in commerce in 1999.
3. The domain name <pocosperolocos.com> is identical to the Pocos Pero Locos trademark.
4. Respondent should be considered as having no rights or legitimate interests in respect of the domain name. Respondent’s domain <pocosperolocos.com> is not currently being used for any legitimate purpose, as it misleadingly diverts consumers by automatically redirecting visitors to Respondent’s own unaffiliated site, <launion1910.com>.
5. Respondent’s current use of the <pocosperolocos.com> domain name is not in connection with any bona fide offering of goods or services. Further, Respondent’s business has nothing to do with the name “Pocos Pero Locos.”
6. Domain name should be considered as having been registered and being used in bad faith, since it misleadingly diverts consumers by automatically redirecting to Respondent’s own website.
7. Respondent’s intentions are to mislead Complainant’s fan base into thinking the Respondent’s website <launion1910.com> is in-fact affiliated with Complainant’s established national radio brand and trademark.
8. Respondent has contacted Complainant on multiple occasions in attempt to elicit substantial monies for the sale of the domain name <pocosperolocos.com>.
9. Respondent’s actions evidence that Respondent has registered the domain name in bad faith for the sole purpose of preventing Complainant from registering the domain name.
1. Complainant did not have a trademark on the phrase “pocos pero locos” when Respondent registered the domain name <pocosperolocos.com>.
2. Furthermore, while Complainant has presented evidence of an application for a trademark registration, it has not presented evidence that it actually holds a trademark on the name “Pocos Pero Locos.”
3. The phrase “Pocos Pero Locos” is a common variant of a phrase universally used throughout the Spanish speaking world that reads "somos pocos pero locos....”
which roughly translated means "we are few but crazy..."
4. Respondent did not know of the existence of Complainant’s radio show at the time he registered the domain pocosperolocos.com.
5. Respondent was solicited to sell the domain to Complainant.
6. Respondent’s business has nothing to do with Complainant’s business. Therefore, the fact that Respondent has no affiliation with any organization bearing the name “Pocos Pero Locos” is irrelevant.
7. Automatically redirecting traffic is not, by its own nature, misleading.
8. Complainant has described Respondent’s <launion1910.com> (redirected website) as a “wholly unrelated news site and blog”
9. Complainant admits that it successfully operates pplnetwork.com. Thus, by its own admission, has established that it has operated and maintained a substantial web presence without its ownership of pocosperolocos.com, or pocosperolocos.net (owned by OS Domain Holdings IV, LLC of Los Angeles), or pocosperolocos.org (owned by Rodrigo Gomez, of Houston), and so on, and has failed to advance any reasonable argument pointing to trademark dilution or damage, let alone provide evidence of such dilution or damage.
10. The claim by Complainant that Respondent has “contacted Complainant on
multiple occasions in an attempt to elicit substantial monies for the sale of the domain name <pocosperolocos.com>” is completely false and the Complainant has not submitted evidence in support of that claim because such evidence does not exist.
11. Respondent has been contacted through email by individuals seeking to purchase the domain name and has refused to sell. Moreover, Respondent was contacted in
2000 via phone by a person claiming affiliation with the radio show Pocos Pero Locos and Respondent explained that he did not plan to sell the domain because he had plans to develop the domain into an online community.
C. Additional Submissions
1. Complainant alleges that it had already acquired a common law trademark on the “pocos pero locos” phrase by the date Respondent registered the <pocosperolocos.com> domain name through intensive use since 1999, and encloses a list of all markets in which the show is currently syndicated.
2. Complainant denies Respondent’s assertion that the Pocos Pero Locos show was neither nationally recognized or trademarked by Complainant in 2000, and mentions radio stations that aired the show at that time and media which informed about the show. It also encloses a Los Angeles Times article and a DVD allegedly featuring news about the radio show Pocos Pero Locos.
3. Complainant further denies that Respondent did not know of the existence of Complainant radio show at the time he registered the <pocosperolocos.com> domain name in July 2000.
4. Complainant affirms that its President, Edward Rios, met Respondent in the summer or early fall of year 2000, while he attended the photo shoot of a Pocos Pero Locos branded musical artist, Spanish Fly. Complainant further affirms that Respondent intended to sell the <pocosperolocos.com> domain name to Mr. Rios, and it encloses an affidavit describing that encounter.
5. Complainant affirms that Respondent registered the <pocosperolocos.com> domain name in 2000 for the sole purpose of cybersquatting with full knowledge of the value of the domain name, and cites Respondent’s passages from his response which would prove he was willing to sell the domain name for a high price.
1. Complainant has failed to meet the burden of proving the three elements required by Rule 4 (a) of ICANN UDRP Policy and has neither provided evidence to support each of the required elements.
2. Although Complainant claims that it held a
trademark on the name “Pocos Pero Locos” before the date Respondent registered the <pocosperolocos.com> domain name, it has not produced any verifiable
evidence in this regard. Complainant has only submitted as evidence an application
for trademark registration dated July 2, 2009, and a conveniently hard to read
newspaper article from the Los Angeles Times, Ventura County Edition, which
lacks a verifiable date of publication but has been hand dated by Complainant
October 2000. In addition to the article not having a verifiable date, or being
published in a smaller county with a markedly smaller
3. The reason Complainant has not submitted proof that it holds a valid federally
registered trademark on the name “pocos pero locos” is because, according to federal law, it does not and the trademark application is still subject to challenge.
4. A fundamental prerequisite for claiming a trademark is the requirement that the “prospective owner must, through the use of the mark, develop an association between it and its goods or services and that it be “distinctive.”
5. Respondent has continuously, with the exception of the year 2009, operated
websites offering services ranging from designer showcase services to networking sites and this fact can be independently verified through Wayback <www.archive.org/web/web.php> by typing the domain name in the search box, not just Respondent’s exhibits.
6. At the time that Respondent registered the domain, the Complainant’s radio show
was less than a year old and the Complainant has not substantiated its claims that the show enjoyed widespread success by the time of Respondent’s registration of the domain.
7. Complainant’s affidavit submitted in support of the claim that Respondent attempted
to sell the domain to Complainant is completely false.
8. Respondent notes that Complainant had an opportunity to register the domain
pocosperolocos.com when it registered the domain pocosperolocos.fm in January of 2000 (at least 6 months prior to Respondent’s registration) and it chose not to do so.
The Panel finds that Complainant has failed to demonstrate registration or any other grounds for trademark rights in the POCOS PERO LOCOS mark and therefore cannot prove the elements necessary to obtain transfer of the disputed domain name.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserted trademark rights on the name POCOS PERO LOCOS by submitting copy of its trademark application filed with the USPTO on July 2, 2009, and also by affirming that it had used that mark intensively since 1999.
The disputed domain name <pocosperolocos.com> was registered on July 31, 2000.
Respondent challenged Complainant’s right on the phrase “Pocos Pero Locos” by alleging that Complainant did not produce any verifiable evidence that proved that it held trademark rights before Respondent registered the domain name.
In its additional submission, Complainant alleged that it had already acquired a common law trademark on the “pocos pero locos” phrase by the date Respondent registered the <pocosperolocos.com> domain name through intensive use since 1999, and enclosed a list of all markets in which the show is currently syndicated. It also submitted a newspaper article, which was supposedly about its radio show, and a DVD.
After reviewing such evidence, the Panel noted that the newspaper article was not suitable for proving the trademark use of the mark “Pocos Pero Locos”.
On the other hand, the attached list of all markets in which the show is currently syndicated is not a useful evidence since it does not prove that the radio show was widely known before the date the <pocosperolocos.com> domain name was registered. Neither the material included in the DVD. See Enhance Mortgage Corp. and Templeton Mortgage Corp. v. Joseph Hayes, FA 1287900 (Nat. Arb. Forum Nov. 20, 2009) (“In order to establish rights in an unregistered mark, Complainant must show that the name has become a distinctive identifier associated with the Complainant and its services; it must show evidence of goodwill and reputation in and to a name. This can be established by showing use of the trademark in association with its business for a number of years, or a rather extensive use of the mark, prior to the registration of the domain name.”).
Even if such evidence had been presented, the Panel is in doubt whether common law rights could have been obtained before Respondent’s registration of the disputed domain name (July 31, 2000), which seems to be just months after Complainant’s allegedly first use of POCOS PERO LOCOS.
Thus, Complainant has provided insufficient evidence that it has common law rights through extensive and continuous use that has resulted in the public associating the term with the Complainant. Complainant’s simple statement of common law rights is not enough. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity ... [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products).
In the absence of further evidence, the Panel therefore concludes that the Complainant has not been able to prove that it has, in the meaning of the Policy, protected trademark rights for the phrase POCOS PERO LOCOS.
As Complainant has failed to present sufficient proof of rights in the POCOS PERO LOCOS mark according to Policy ¶4(a)(i) it is unnecessary to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Because Complainant has failed to provide sufficient evidence to establish that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <pocosperolocos.com> domain name be RETAINED by Respondent.
Hector A. Manoff, Panelist
Dated: November 25, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum