national arbitration forum

 

DECISION

 

BORGES USA, INC. v. Gary Girolimon Associates

Claim Number: FA1202001427763

 

PARTIES

Complainant is BORGES USA, INC. (“Complainant”), represented by Tracy A. Agrall, California, USA.  Respondent is Gary Girolimon Associates (“Respondent”), represented by Ashlyn Lembree, New Hampshire, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <caramia.com> and <caramia.net>, registered with Network Solutions, LLC.

 

PANEL

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.

 

Jaime Delgado as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2012; the National Arbitration Forum received payment on February 2, 2012.

 

On February 3, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <caramia.com> and <caramia.net> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 February 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2012 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@caramia.com, postmaster@caramia.net.  Also on February 8, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.

 

A timely Response was received and determined to be complete on February 29, 2012.

 

On March 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jaime Delgado as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

This dispute concerns the domain name(s) identified below:

      CARAMIA.COM - created on May 1, 1997

CARAMIA.NET - created on January 11, 1999

 All the goods associated with the marks are food products.

The registrar with whom the domain names are registered is:

Name: Network Solutions, LLC

Address: 13861 Sunrise Valley Dr. Suite 300

Herndon, VA 20171

Telephone: (703) 668-4600

(800) 333-7680

Website: www.networksolutions.com

 

A. The domain names are confusingly similar to trademarks in which the Complainant has rights.

 

Respondent’s domain names are identical to Complainant’s trademarks. Complainant’s predecessor in interest had federally registered trademarks for CARA MIA dating back to 1967, more than thirty years before Respondent registered its domain. Complainant and its predecessor have an extensive history using this mark. The name CARA MIA has become distinctive as to its products. CARA MIA products were sold nationally and internationally at the time Respondent registered its domain names.

 

 

 

 

B. The Respondent has no rights or legitimate interests in respect of the domain  names.

Complainant’s predecessor in interest was using the name CARA MIA for

its products  many, many years before Respondent registered the domain names.

This presence has created worldwide recognition of the CARA MIA brand. Today, CARA MIA is also part of the BORGES family of food products.

Respondent, on the other hand, has all but abandoned its use of the name Caramia Consulting. While Respondent may have used the name of Caramia Consulting in the past, it has moved away from this name in favor of Gary Girolimon.

 

C. The domain names were registered and are being used in bad faith

Under Paragraph 2 of the Policy, a Registrant represents and warrants that, to the best of a Registrant’s knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party. Clearly, based upon the history of the CARAMIA brand and the trademarks,

Respondent has violated this policy. Complainant’s trademarks date back to 1967.  CARAMIA products were sold in the United States for years prior to this date. Respondent had a duty to investigate whether this name would infringe, not simply to take a name because it was available.

 

B.   Respondent

 

a.   Identical or confusingly similar Domain Name

 

Respondent concedes that the disputed domain names are similar to Complainant’s trademark, CARA MIA. However, respondent disputes that the similarity creates confusion. Complainant’s trademark does not exist in isolation. Trademark rights are recognized by the literal and design elements.

 

b.    Rights and legitimate interests-

Complainant’s first contact with Respondent regarding the disputed domain names was November 17, 2011. Complainant concedes that Respondent used the domain name for his business, Caramia Consulting, as early as 2000. In addition to Complainant’s concession that Respondent has used a name corresponding to the domain name in connection with a bona fide offering of goods or services, Annex J includes emails dating back to 2002 that were sent to and from business clients via email addresses at the disputed domain names.

 

c.   The registrations were registered and are being used in bad faith

Respondent did not register the domain name for the purpose of selling or transferring it.

 

He has refused at least three offers from different inquirers to sell the domain name, only one of which was from Complainant, and all of which he declined. Furthermore, Respondent has never sold a domain name.

Respondent registered the domain names because his daughter’s names are Cara and Mia, and he has never been involved in a domain name dispute. Accordingly, respondent did not register the domain names to prevent Complainant from using them, and he has never engaged in a pattern of such conduct. Furthermore, Respondent registered the disputed domain in 1997 and 1998. And, although it is widely accepted that the doctrine of laches does not apply to UDRP disputes a Complainants delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith”

 

FINDINGS

Complainant is the owner of the following trademarks registered with the United States Patent and Trademark office.

 

ACTIVE TRADEMARKS   REG. NO.          REG.   DATE

CARA MIA                           0827948               1967-04-25

CARA MIA (Label Design)  1932970               1995-11-07

CARA MIA                     2889673        2004-09-28

CARA MIA                      3180879        2006-12-05

CARA MIA SALAD TOSS    3295597   2007-09-18

CARA MIA and DESIGN      3569893   2009-02-03

 

Complainant is also the successor in interest to the following inactive trademarks, previously registered in the United States Patent and Trademark office.

 

INACTIVE TRADEMARKS                           REG. NO.             REG. DATE

CARA MIA and DESIGN                                   0827949          1967-04-25

CARA MIA and DESIGN                                   1474340         1988-01-26

 

Complainant is the owner of the following international trademarks.

TRADEMARKS                         REG. NO. REG.                       DATE        COUNTRY

CARA MIA and DESIGN                       TMA490927                1998-03-05 CANADA

CARA MIA                                TMA646785                2005-08-26 CANADA

CARA MIA and DESIGN                       914998                                   2002-06-24 MEXICO

CARA MIA and DESIGN                       786804                                    2002-06-24 MEXICO

CARA MIA                                2302704                      2003-08-015 UNITED KINGDOM

All the goods associated with the marks are food products.

Respondent’s domain names are identical to Complainant’s trademarks.

 

 

DISCUSSION

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant claims that it has established its rights in the CARA MIA mark by registering it with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 827,948 registered April 25, 1967).  Complainant submits the trademark certificates for the mark to verify its claims.  Based upon Complainant’s registration of the mark, Complainant has established its rights in the CARA MIA mark under Policy ¶ 4(a)(i).  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).

 

Complainant also claims that Respondent’s disputed domain names are identical to Complainant’s CARA MIA mark.  Complainant states that both the <caramia.com> and <caramia.net> domain names include the entire mark while removing the space between the terms and adding a generic top-level domain (“gTLD”), either “.net” or “.com.”  Respondent’s disputed domain names are identical to Complainant’s mark under Policy ¶ 4(a)(i) because the changes made are so minor as to create no actual difference between the domains and the mark.  See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). 

 

While Respondent contends that the <caramia.com> and <caramia.net> domain names are comprised of common and generic terms and as such cannot be found to be identical to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark.  See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

 

Rights or Legitimate Interests

 

Complainant claims that Respondent is not commonly known by the disputed domain names.  Complainant states that the WHOIS information identifies the registrant of the disputed domain names as “Gary Girolimon.”  Complainant also states that, although Respondent did at one time use the trade name “Caramia Consulting,” it was not enough to establish that Respondent was commonly known by the disputed domain names because the use was sporadic and short-lived.  Complainant claims that Respondent is commonly known by the “Gary Girolimon” name because that is the name displayed at its websites and that is the actual name of its company, “Gary Girolimon Associates.”  Complainant submits evidence in the form of business registration documents that appear to show that the company operating under the “Caramia Consulting” name is now inactive. See Complainant’s Annex 4.  Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

Complainant also claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.  According to Complainant, the disputed domain names resolve to a website offering services and content unrelated to its business.  Complainant states that the disputed domain name formerly resolved to a website offering consulting services under the “Caramia Consulting” heading and currently resolves to a similar website offering to same kind of services under the “Gary Girolimon Associates” heading.  Complainant also states that after it filed this dispute, Respondent changed the content provided on the website to include the “Caramia Consulting” name.  Previous panels have found that such a use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).  Therefore, Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

 

Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

 

Respondent has not registered or used the <caramia.com> and <caramia.net> domain names in bad faith because Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).

 

Respondent argues that it did not register or use the disputed domain names in bad faith.  Respondent claims that Complainant has failed to demonstrate how Respondent has registered or used the disputed domain name in bad faith because mere allegations of bad faith are insufficient to establish bad faith.  Respondent states that it never intended to sell the disputed domain names as evidenced by its refusal of purchase offers by Complainant and others.  Respondent states that it never disrupted Complainant’s business because they are in such different industries as to make that assessment impossible.  Respondent claims that no Internet user has actually been confused into purchasing its goods merely because it associated the disputed domain names with Complainant’s mark, which Respondent states is for “artichokes” and not design consulting services.  Finally, Respondent states that it had no knowledge of Complainant prior to Complainant contacting it about the disputed domain names.  Respondent did not register or use the disputed domain names in bad faith under Policy ¶ 4(a)(iii).  See Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that because “Respondent neither offered the Domain Name for sale, nor wanted it to disrupt Complainant’s business, [nor] prevent Complainant from reflecting the mark in its domain,” it did not register or use the domain name <metagen.com> in bad faith); see also Builder’s Best Inc. v. Okada, D2004-0748 (WIPO Nov. 17, 2004) (“…[T]o warrant a finding of bad faith under the Policy, in general, there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark, not just ‘someone’s’ mark.”).

 

Respondent contends that the <caramia.com> and <caramia.net> domain names are comprised entirely of common terms that have many meanings apart from use in Complainant’s CARA MIA mark.  Respondent states that the terms of the disputed domain name are the proper names of its children, “cara” and “mia.”  Respondent also states that the terms translate from Italian to mean “my dear” in English.  Moreover, Respondent contends that the registration and use of domain names comprising such common terms is not necessarily done in bad faith.  A  respondent is free to register a domain name consisting of common terms and the domain name currently in dispute contains such common terms,  Respondent did not register or use the <caramia.com> and <caramia.net> domain names in bad faith under Policy ¶ 4(a)(iii).  See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith

 

DECISION

Having established two elements but failing to establish bad faith as required under the ICANN Policy, the Panel concludes that relief shall be DENIED

 

Accordingly, it is Ordered that the <caramia.com> and <caramia.net> domain name REMAIN WITH RESPONDENT

 

 

Jaime Delgado, Panelist

Dated:  March 16, 2012

 

 

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