The Coca-Cola Company v. Pablo Blanco Del Rio / Net Service Syst Spain S.L.
Claim Number: FA1111001416842
Complainant is The Coca-Cola Company (“Complainant”), represented by Laura Alonso of Hoyng Monegier Spain LLP, Spain. Respondent is Pablo Blanco Del Rio / Net Service Syst Spain S.L. (“Respondent”), represented by Joaquin Vallés Dalmau of Net-Service Syst Spain, SL, Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myfanta.us>, registered with 1&1 Internet AG.
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 November 22, 2011; the National Arbitration Forum received a hard copy of the Complaint on November 22,2011.
On November 23, 1&1 Internet AG confirmed by e-mail to the Forum that the <myfanta.us> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 22, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 27, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2012, 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 Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <myfanta.us> domain name is confusingly similar to Complainant’s FANTA mark.
2. Respondent does not have any rights or legitimate interests in the <myfanta.us> domain name.
3. Respondent registered and used the <myfanta.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Coca-Cola Company, is the owner of the FANTA mark. The mark is used in connection with soft-drink beverages, games, and other online services. Complainant has registered the FANTA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 513,565 registered August 16, 1949), the European Union Office for the Harmonization of the Internal Market (“OHIM”) (Reg. No. 2,091,817 registered March 4, 2002), and the Spanish Patent and Trademark Office (“SPTO”) (Reg. No. M 177995 registered January 23, 1946), among others.
Respondent, Pablo Blanco Del Rio / Net Service Syst Spain S.L., registered the disputed domain name on January 27, 2010. The <myfanta.us> domain name resolves to an inactive 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 argues that it has rights in the FANTA mark because it has registered the mark with the USPTO (Reg. No. 513,565 registered August 16, 1949), OHIM (Reg. No. 2,091,817 registered March 4, 2002), and the SPTO (Reg. No. M 177995 registered January 23, 1946), among others. Panels have found that the registration of a mark with a trademark authority establishes the registrant’s rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). The Panel finds that, given Complainant’s registration with various countries’ trademark authorities, Complainant has rights in the FANTA mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <myfanta.us> domain name is confusingly similar to its mark. Respondent makes only two changes to Complainant’s mark in the domain name: the addition of the generic term “my” and the addition of the country-code top-level domain (“ccTLD”) “.us.” The Panel find that the addition of the generic term “my” fails to distinguish the disputed domain name from the FANTA mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). The Panel also finds that the addition of the ccTLD “.us” is irrelevant for a determination of confusing similarity. See Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”); see also Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the “.us” ccTLD does not negate confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel finds that the <myfanta.us> domain name is confusingly similar to Complainant’s FANTA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Where a complainant has made a prima facie case in support of the allegations it makes, the burden shifts to the respondent to disprove these claims. 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 UDRP ¶ 4(c)); see also 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 [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). If, however, the respondent does not submit to the panel a response to the complaint, the panel may infer that the respondent is void of rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that this allegation has been supported by Complainant by evidence amounting to a prima facie case. The Panel is left without the benefit of a response from Respondent and thus may infer that Respondent does not have rights or legitimate interests in the <myfanta.us> domain name. However, the Panel will review the record against the Policy ¶ 4(c) factors for information which suggests otherwise.
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <myfanta.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant claims that Respondent does not own a trademark similar to the domain name and is not authorized to be using Complainant’s FANTA mark in any way. The WHOIS record for the disputed domain name lists “Pablo Blanco Del Rio / Net Service Syst Spain S.L” as the domain name registrant. The Panel finds that the information available supports a finding that the Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). 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 UDRP ¶ 4(c)(ii) does not apply); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant).
Complainant further alleges that Respondent non-use of the <myfanta.us> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The disputed domain name does not resolve to an active website. The panels in Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007), and U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), held that the holding of an inactive website did not confer rights or legitimate interests onto the respondent. Therefore, the Panel finds that Respondent’s nonuse of the disputed domain name is neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
In order for a complainant to prevail, bad faith registration or use on the part of the respondent must be shown. While Policy ¶ 4(b) does provide a list of factors which indicate bad faith, the list is not intended to be exclusive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also 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 Panel will therefore review the totality of the circumstances to determine bad faith.
Complainant argues that Respondent’s failure to make an active use of the <myfanta.us> domain name is evidence of bad faith. Panels have previously held this to be true in such cases as DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), and Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000), where the panels held that nonuse of a disputed domain name is tantamount to proof of bad faith. The <myfanta.us> domain name resolves to an inactive website. The Panel therefore finds that Respondent’s inactive holding of the <myfanta.us> domain name demonstrates bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the FANTA mark. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myfanta.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 13, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page