Patrón Spirits International AG v. Rampe Purda
Claim Number: FA1012001361905
Complainant is Patrón Spirits International AG (“Complainant”), represented by Bernard R. Gans of Jeffer Mangels Butler & Mitchell LLP, California, USA. Respondent is Rampe Purda (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <patrontequilla.com>, registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 3, 2010; the National Arbitration Forum received payment on December 6, 2010. The Complaint was submitted in both the Finnish and English languages.
On December 7, 2010, HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS confirmed by e-mail to the National Arbitration Forum that the <patrontequilla.com> domain name is registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS and that Respondent is the current registrant of the name. HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS has verified that Respondent is bound by the HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 14, 2010, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of January 3, 2011 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@patrontequilla.com. Also on December 14, 2010, the Finnish language 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 January 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <patrontequilla.com> domain name is confusingly similar to Complainant’s PATRON TEQUILA mark.
2. Respondent does not have any rights or legitimate interests in the <patrontequilla.com> domain name.
3. Respondent registered and used the <patrontequilla.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Patrón Spirits International AG, is an international manufacturer and distributor of alcoholic beverages and related goods and services. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its PATRON mark (e.g., Reg. No. 1,809,473 issued September 14, 1993). Complainant also owns trademark registrations with the European Union Office for Harmonization in the Internal Market (“OHIM”) for its PATRON TEQUILA (e.g., Reg. No. 2130466 issued January 20, 2003) and PATRON marks (e.g., Reg. No. 1747666 issued May 22, 2009).
Respondent, Rampe Purda, registered the <patrontequilla.com> domain name on September 26, 2009. Respondent’s disputed domain name resolves to a website that features a commercial search engine and several third-party hyperlinks to competing alcoholic beverage and related goods websites and businesses. Respondent has also listed the disputed domain name for sale on the auction website located at <sedo.com>, which allows Internet users to make an offer for the purchase of the domain name.
Complainant provides evidence to show that Respondent, Rampe Purda, has been the Respondent in previous UDRP proceedings in which it was ordered to transfer the disputed domain names to the respective complainants. See State Farm Mut. Auto. Ins. Co. v. Purda, FA 1350776 (Nat. Arb. Forum Nov. 26, 2010); see also Two Flags Joint Venture, LLC v. Purda, FA 1350776 (Nat. Arb. Forum Nov. 18, 2010); see also Nat’l Westminster Bank pic v. Purda, FA 1349017 (Nat. Arb. Forum Nov. 23, 2010); see also State Farm Mut. Auto. Ins. Co. v. Purda, FA 1347311 (Nat. Arb. Forum Nov. 9, 2010).
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.
The Panel finds that Complainant has presented sufficient evidence to show that it possesses rights in both the PATRON (e.g., USPTO Reg. No. 1,809,473 issued September 14, 1993); (e.g., OHIM Reg. No. 1747666 issued May 22, 2009) and PATRON TEQUILA marks (e.g., OHIM Reg. No. 2130466 issued January 20, 2003)
through its trademark registrations with the USPTO and OHIM. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant contends that the <patrontequilla.com> domain name is confusingly similar to Complainant’s PATRON TEQUILA mark. Complainant first notes that the domain name essentially contains Complainant’s entire mark, absent the space between the terms, while adding an extra letter “l” in the TEQUILA portion of the mark. Previous panels have determined that since spaces are impermissible in a domain name and because a generic top-level domain (“gTLD”) such as “.com” is a required element, that neither of those elements are relevant to a Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel need only analyze whether the “patrontequilla” portion of the domain name is confusingly similar to Complainant’s PATRON TEQUILA mark. The Panel finds that Respondent’s domain name contains an additional letter “l” which does not serve to adequately distinguish the disputed domain name from Complainant’s mark. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <patrontequilla.com> domain name. Complainant is required to make a prima facie case in support of these allegations under Policy ¶ 4(a)(ii). Once the Complainant has produced a prima facie case the burden shifts to Respondent to show they do have a right or legitimate interest in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also 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)). The Panel finds that Complainant has established a prima facie case. Due to the Respondent’s failure to respond to these proceedings the Panel may assume Respondent does not have any right or legitimate interest in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will continue to evaluate the evidence on record to determine whether Respondent has rights and legitimate interests in the <patrontequilla.com> domain name under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <patrontequilla.com> domain name. Complainant alleges that Respondent is not authorized or licensed to use Complainant’s PATRON TEQUILA mark. The WHOIS information identifies the domain name registrant as “Rampe Purda,” which Complainant contends is not similar to Respondent’s <patrontequilla.com> domain name. Respondent has failed to respond to these allegations and has failed to present evidence that would suggest that Respondent is not commonly known by the disputed domain name. The Panel concludes that Respondent is not commonly known by the <patrontequilla.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s <patrontequilla.com> domain name resolves to a website that features a commercial search engine and displays various third-party links to competing companies in the alcoholic beverage and related goods industry. Complainant argues that Respondent receives compensation from those companies advertised on its website, and that such use is evidence that Respondent lacks rights and legitimate interests in the domain name. The Panel finds that such use by Respondent of a confusingly similar domain name does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
Further, Complainant has submitted evidence to show that Respondent has listed the disputed domain name on the auction site of <sedo.com>, which allows Internet users to buy domain names by submitting an offer to the registrant through the website. Previous panels have determined that an attempt to sell a domain name by auctioning it to the highest bidder is evidence that the respective respondents did not have rights or legitimate interests in the domain name, and so this Panel finds. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Lastly, Complainant argues that Respondent’s registration and use of a typosquatted version of its PATRON TEQUILA mark in the <patrontequilla.com> domain name is further evidence that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). The Panel agrees and finds that Respondent’s registration and use of a misspelled version of Complainant’s mark in the disputed domain name is further evidence of its rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has presented evidence that Respondent has listed the disputed domain name for sale on the third-party auction website of <sedo.com>. The Panel finds that such evidence provides a logical basis for concluding that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Complainant has also presented evidence that Respondent has been the respondent in several previous UDRP proceedings in which Respondent was ordered to transfer the domain name at issue to the respective complainants. See State Farm Mut. Auto. Ins. Co. v. Purda, FA 1350776 (Nat. Arb. Forum Nov. 26, 2010); see also Two Flags Joint Venture, LLC v. Purda, FA 1350776 (Nat. Arb. Forum Nov. 18, 2010); see also Nat’l Westminster Bank pic v. Purda, FA 1349017 (Nat. Arb. Forum Nov. 23, 2010); see also State Farm Mut. Auto. Ins. Co. v. Purda, FA 1347311 (Nat. Arb. Forum Nov. 9, 2010). The Panel finds that such evidence, in conjunction with the current proceeding, is evidence that Respondent has engaged in a bad faith pattern of registering domain names containing the trademarks or variations thereof of others. Therefore, the Panel finds that Respondent registered and is using the <patrontequilla.com> domain name in bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004)(“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).
Complainant argues that Respondent’s disputed domain name resolves to a website that displays various third-party links to competing companies within the alcoholic beverage industry. The Panel finds that such use invariably disrupts the business of Complainant by diverting Internet users to competing companies, and that such use is evidence of bad faith registration and use under 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).
Further, Complainant has presented arguments indicating that Respondent receives commercial compensation through its use of the disputed domain name and the third-party hyperlinks contained thereon. The Panel finds that where Respondent is using the disputed domain name to create a likelihood of confusion with Complainant’s mark in order to intentionally attract Internet users to Respondent’s website, where it presumably collects click-through fees from the businesses advertised on its website, that Respondent has acted in bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel has already determined that Respondent’s registration and use of the <patrontequilla.com> domain name constitutes typosquatting. The Panel goes on to find that Respondent’s registration and use of a typosquatted version of Complainant’s mark in a domain name is further evidence of bad faith under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <patrontequilla.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: January 10, 2011
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