Mi Pueblo Food San Jose, Inc. v. Pueblo Corporation
Claim Number: FA0912001296998
Complainant is Mi Pueblo Food San Jose, Inc. (“Complainant”), represented by Charles E. Runyan, of Runyan Law, Arizona, USA. Respondent is Pueblo Corporation (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mipueblo.com>, registered with Network Solutions, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 8, 2009.
On December 2, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <mipueblo.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 December 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 4, 2010 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 postmaster@mipueblo.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mipueblo.com> domain name is identical to Complainant’s MI PUEBLO mark.
2. Respondent does not have any rights or legitimate interests in the <mipueblo.com> domain name.
3. Respondent registered and used the <mipueblo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mi Pueblo Food San Jose, Inc., operates grocery stores in the state of California. Complainant began operation in 1991 by opening its first store. Complainant currently operates eighteen stores. Complainant has spent over half a million dollars on advertisement and promotion of Complainant’s stores and the MI PUEBLO mark. Complainant holds a trademark registration with the United States Patent and Trademark Office for its MI PUEBLO mark (Reg. No. 3,576,655 issued February 17, 2009).
Respondent registered the <mipueblo.com> domain name on October 23, 1998. The disputed domain name does not resolve to an active website.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 has provided evidence it holds a valid trademark
registration for its MI PUEBLO mark (Reg. No. 3,576,655 issued February 17,
2009). At the time Respondent registered
the disputed domain name, Complainant did not own a trademark registration with
the USPTO. However, the Panel finds a
governmental trademark registration is not necessary to establish rights under
Policy ¶ 4(a)(i). Previous panels have
determined that a federal registration is not required so long as the
Complainant can establish common law rights associated with the mark. See
SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that the complainant's trademark or
service mark be registered by a government authority or agency for such rights
to exist); see also Artistic Pursuit LLC v.
calcuttawebdevelopers.com, FA 894477
(Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require
a trademark registration if a complainant can establish common law rights in
its mark).
Complainant operates grocery stores in the state of
California, where Respondent resides.
Complainant opened its first grocery store and began operation in
1991. Complainant currently operates
eighteen stores throughout California. Complainant
has spent over half a million dollars on advertisement and promotion of
Complainant’s stores and its MI PUEBLO mark.
Complainant has consistently
used its mark since 1991. The Panel
finds Complainant has established common law rights in its MI PUEBLO
mark through continuous and extensive commercial use predating Respondent’s
registration on October 23, 1998 of the disputed domain name under Policy ¶
4(a)(i). See Ass’n of Tex. Prof’l
Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31,
2006) (holding that the complainant had demonstrated common law rights in the
ATPE mark through continuous use of the mark in connection with educational
services for over twenty-five years); see
also Hiatt v. personal fan & official site builders : we build great sites,
FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark
authority is unnecessary under Policy ¶ 4(a)(i) in
instances where a mark has gained secondary meaning through extensive
commercial use and common law rights have been established ….”).
Respondent’s <mipueblo.com> domain name is virtually identical to Complainant’s MI PUEBLO mark. The disputed domain name simply removes a space and adds a generic top-level domain (“gTLD”) “.com” to Complainant’s MI PUEBLO mark. The Panel finds the disputed domain name is confusingly similar to Complainant’s mark despite the removal of a space and the addition of a gTLD. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Thus, the Panel concludes the <mipueblo.com> domain name is identical to Complainant’s MI PUEBLO mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged Respondent does not have rights or legitimate interests in the <mipueblo.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant asserts that Respondent is not authorized to use the MI PUEBLO mark. The WHOIS information identifies the registrant as “Pueblo Corporation.” However, Respondent has offered no evidence further suggesting that Respondent is commonly known by the <mipueblo.com> domain name. The Panel does not find any other evidence on the record suggesting that Respondent is commonly known by the <mipueblo.com> domain name. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Respondent fails to make an active use of the <mipueblo.com> domain name. In the past eleven years, Respondent has not made any use of the website resolving from the disputed domain name. The Panel finds Respondent’s failure to actively use the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that it may consider the totality of the
circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not
limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of
bad faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
The website resolving from the <mipueblo.com> domain name is not an active webpage. Respondent has failed to make an active use of the disputed domain name for the past eleven years. The Panel finds this failure to make an active use of the confusingly similar disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mipueblo.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 21, 2010
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