Goya
Foods, Inc. v.
Claim Number: FA1003001316364
Complainant is Goya
Foods, Inc. (“Complainant”), represented by John M. Rannells, of Baker and Rannells PA,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <recetasgoya.com>, registered with Compana, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2010.
On April 1, 2010, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <recetasgoya.com> domain name is registered with Compana, LLC and that Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 April 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@recetasgoya.com. Also on April 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" through submission of a Written Notice, as defined in Rule 1. 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 <recetasgoya.com> domain name is confusingly similar to Complainant’s GOYA mark.
2. Respondent does not have any rights or legitimate interests in the <recetasgoya.com> domain name.
3. Respondent registered and used the <recetasgoya.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Goya Foods, Inc.,
provides food products, cookbooks, food distribution services, online retail
store services, and numerous related goods and services. Complainant is also the largest purveyor of
Hispanic food products in the
Respondent registered the <recetasgoya.com> domain name on December 31, 2005. The disputed domain name resolves to a website that provides link to third-party websites, including those that compete with Complainant’s business.
Complainant
offers evidence that Respondent has a history of registering domain names that
infringe upon the trademark rights of others and has been ordered by previous
UDRP panels to transfer the disputed domain names to the respective
complainants. See, e.g., Travelocity.com LP v.
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 asserts rights in its GOYA mark through its registration of its GOYA mark with the USPTO (e.g., Reg. No. 966,178 issued August 14, 1973). The Panel finds Complainant has established rights in the GOYA mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues Respondent’s disputed domain name is
confusingly similar to its GOYA mark.
Respondent replicates Complainant’s mark in its entirety in the disputed
domain name. Respondent then adds the
generic Spanish word “recetas,” which means “recipes” in English, and the
generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed
domain name. The Panel finds these
additions do not distinguish Respondent’s disputed domain name from
Complainant’s mark. Therefore, the Panel
concludes that Respondent’s <recetasgoya.com> domain name is
confusingly similar to Complainant’s GOYA mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s
<amextravel.com> domain name confusingly similar to Complainant’s AMEX
mark because the “mere addition of a generic or descriptive word to a
registered mark does not negate” a finding of confusing similarity under Policy
¶ 4(a)(i)); see also Am.
Online, Inc. v. Villanueva,
FA 236589 (Nat. Arb. Forum April 2, 2004) (“The addition of the generic French
and Spanish words is insufficient to distinguish the domain names from
Complainant’s marks.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding
that the mere addition of the generic top-level domain “.com” is insufficient
to differentiate a disputed domain name from a mark).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case showing Respondent lacks rights or legitimate interests in the <recetasgoya.com> domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent did not submit a response, the Panel will evaluate the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Complainant asserts it is not affiliated with Respondent in any way nor has it given Respondent permission to use the GOYA mark in a domain name. Furthermore, the WHOIS information lists the registrant as “Texas International Property Associates – NA NA.” Thus, Respondent is not commonly known by the disputed domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Furthermore, Complainant alleges Respondent uses the
disputed domain names to feature advertisements and links to third-party
websites, including third-parties that directly compete with Complainant’s
business. Respondent likely receives
pay-per-click fees from each Internet user that is redirected to these
third-party websites. Therefore, the
Panel finds Respondent’s use of the disputed domain names does not constitute a
bona fide offering of goods and
services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under
Policy ¶ 4(c)(iii). See Computer Doctor Franchise
Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000)
(finding that the respondent’s website, which is blank but for links to other
websites, is not a legitimate use of the domain names); see also Jerry Damson, Inc. v.
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been subject to numerous UDRP proceedings,
wherein the disputed domain names were ordered to be transferred from
Respondent to the respective complainants in those cases. See,
e.g., Travelocity.com
LP v.
As previously discussed, Respondent uses the <recetasgoya.com> domain name to redirect Internet users to a website that list links to third-party websites, including links to Complainant’s competitors. The Panel finds this use disrupts Complainant’s business and constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant also claims Respondent is deliberately using a domain name that is confusingly similar to Complainant’s mark to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. In addition, Respondent likely receives click-through fees from its use of the disputed domain name. The Panel finds Respondent’s use of the disputed <recetasgoya.com> domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (finding that “…Respondent’s disputed domain names must cause Internet users mistakenly to believe that the disputed domain names are affiliated with Complainant. The user confusion that the domain names must cause is evidence that Respondent registered and used the domain names in bad faith.”); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <recetasgoya.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 12, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum