Goya Foods, Inc. v. eZder SAC / Danny Marcelo
Claim Number: FA1012001365161
Complainant is Goya Foods, Inc. (“Complainant”), represented by John M. Rannells of Baker and Rannells PA, New Jersey, USA. Respondent is eZder SAC / Danny Marcelo (“Respondent”), Peru.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goyafoodsperu.com>, registered with ANSWERABLE.COM.
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 28, 2010; the National Arbitration Forum received payment on December 28, 2010.
On December 30, 2010, ANSWERABLE.COM confirmed by e-mail to the National Arbitration Forum that the <goyafoodsperu.com> domain name is registered with ANSWERABLE.COM and that Respondent is the current registrant of the name. ANSWERABLE.COM has verified that Respondent is bound by the ANSWERABLE.COM 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 January 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 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@goyafoodsperu.com. Also on January 6, 2011, 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 February 1, 2011, 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" 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <goyafoodsperu.com> domain name is confusingly similar to Complainant’s GOYA mark.
2. Respondent does not have any rights or legitimate interests in the <goyafoodsperu.com> domain name.
3. Respondent registered and used the <goyafoodsperu.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Goya Foods, Inc., is owner of the GOYA mark and has used the mark since 1936 in connection with its food products, food distribution services, and related goods and services. Complainant holds numerous trademark registrations for the GOYA mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 966,178 issued Aug. 14, 1973) and the Instituto Nacional de Defensa de la Competencia y de la Proteccción de law Propriedad Intelectual (“INDECOPI”) of Peru (e.g. Reg. No. 96103 issued January 28, 1992).
Respondent, eZder SAC / Danny Marcelo, registered the <goyafoodsperu.com> on August 6, 2009. The disputed domain name resolves to an inactive website that states it is under construction.
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 demonstrated its rights in the GOYA mark through its federal trademark registration pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Here, Complainant holds numerous trademark registrations for its GOYA mark throughout the world, including the USPTO (e.g. Reg. No. 966,178 issued Aug. 14, 1973) and the INDECOPI (e.g. Reg. No. 96103 issued January 28, 1992).
Respondent’s <goyafoodsperu.com> domain name is confusingly similar to its GOYA mark. The disputed domain name incorporates Complainant’s entire mark and merely differs through the addition of the descriptive word “foods”, the geographic term “peru”, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of the descriptive word “foods”, which relates to Complainant’s business in the food production and distribution industry, fails to properly distinguish the disputed domain name from Complainant’s mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel also finds that the addition of a geographic term does not differentiate the disputed domain name from Complainant’s mark. See Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”). Finally, the Panel finds that the affixation of a gTLD is not enough to effectively distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel concludes that the <goyafoodsperu.com> domain name is confusingly similar to Complainant’s GOYA mark under Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been met.
Complainant maintains that Respondent lacks rights and legitimate interests in the <goyafoodsperu.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel stated that 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.” Here, Complainant presented a prima facie case in support of its allegations. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests. 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). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <goyafoodsperu.com> domain name. In the WHOIS database, Respondent identifies itself as “eZder SAC/Danny Marcelo,” which is not similar to the disputed domain name. Complainant asserts that Respondent’s use of the GOYA mark is without authorization, consent or permission of Complainant. The Panel, finding no evidence indicating that Respondent is commonly known by the disputed domain name, concludes that Respondent is not commonly known by the <goyafoodsperu.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent is using the disputed domain name to host a website with no active use or content. The Panel finds that Respondent’s use of a confusingly similar disputed domain name to operate an inactive website is not 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant alleges that Respondent registered and is using the <goyafoodsperu.com> domain name in bad faith. While Complainant does not make any ¶ 4(b) arguments, the Panel may look beyond Policy ¶ 4(b) to the totality of the circumstances when analyzing bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
The disputed domain name resolves to an inactive website that states the site is under construction. The Panel finds that Respondent’s use of the confusingly similar <goyafoodsperu.com> domain name to host an inactive website is evidence of bad faith use and registration under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goyafoodsperu.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 8, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page