Grupo Ciento Once (111), S.A. v. GUATE2NIGHT.COM / Privacy Protect
Claim Number: FA1207001452411
Complainant is Grupo Ciento Once (111), S.A. (“Complainant”), represented by Zak Muscovitch of The Muscovitch Law Firm, Canada. Respondent is GUATE2NIGHT.COM / Privacy Protect (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guate2night.com>, registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2012; the National Arbitration Forum received payment on July 9, 2012. The Complaint was received in English and Slovak.
On July 12, 2012, HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM confirmed by e-mail to the National Arbitration Forum that the <guate2night.com> domain name is registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM and that Respondent is the current registrant of the name. HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM has verified that Respondent is bound by the HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.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 July 13, 2012, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of August 2, 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@guate2night.com. Also on July 13, 2012, the Slovak language 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
On August 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 issues 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
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.
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.”).
Complainant alleges that it uses the GUATE2NIGHT.COM & Design mark in connection with its network of websites that provide entertainment and nightlife related news and information. Complainant claims that it owns trademark registrations for the mark with the GRIP (e.g., Reg. No. 133,642 registered January 10, 2005). The Panel notes that Respondent does not reside or operate in Guatemala. Nevertheless, the Panel concludes that Complainant’s trademark registrations establish Complainant’s rights in the GUATE2NIGHT.COM & Design mark for the purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant asserts that Respondent’s <guate2night.com> domain name is confusingly similar to Complainant’s GUATE2NIGHT.COM & Design mark. The Panel notes that the design element of Complainant’s mark is not relevant to the Policy ¶ 4(a)(i) analysis. See Roux Labs., Inc. v. Sheldeez Beauty Salon, D2005-0799 (WIPO Sept. 30, 2005) (“The fact that Complainant’s stylized mark incorporates a distinctive design element is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”). Therefore, the Panel determines that Respondent’s <guate2night.com> domain name is identical to Complainant’s GUATE2NIGHT.COM & Design mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <guate2night.com> domain name. Complainant claims that Respondent is actually “Isaac Goldstein” because of the e-mail address listed in the WHOIS information, guate2night@privacy-protect.org, and “Isaac Goldstein” is the owner of the <privacy-protect.org> domain name. Complainant contends that “Isaac Goldstein” was listed as the registrant of the disputed domain name in the WHOIS information on January 27, 2010. The Panel notes that the WHOIS information currently lists “GUATE2NIGHT.COM / Privacy Protect” as the registrant of the <guate2night.com> domain name. As Respondent did not respond to this case, the Panel notes that Respondent failed to present any further evidence that it is commonly known by the disputed domain name. Regardless of the WHOIS information, the Panel finds that Respondent is not commonly known by the <guate2night.com> domain name under Policy ¶ 4(c)(ii). See Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”).
Complainant contends that Respondent formerly used the <guate2night.com> domain name to resolve to a website that solicited users for “free prizes” by participating in a “survey.” Complainant claims that the resolving website was designed to look like the Facebook website and Respondent received a commission each time someone participates in the survey. The Panel determines that this prior use of the <guate2night.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Nat. Arb. Forum Nov. 20, 2009) (finding that Respondent lacked rights and legitimate interests where the disputed domain name was used to solicit the completion of a survey by Internet users).
Complainant further claims that Respondent previously used the <guate2night.com> domain name to resolve to an advertisement for MGM casinos, from which Respondent received a commission. The Panel finds that such a use is also not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <guate2night.com> domain name under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Finally, Complainant avers that the <guate2night.com> domain name resolves to a website that hosts pay-per-click hyperlinks. Complainant argues that Respondent receives compensation each time an Internet user accesses the hyperlinks. Thus, the Panel holds that Respondent’s current use of the <guate2night.com> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant has proven this element.
Complainant alleges that Respondent is actually “Isaac Goldstein.” Complainant argues that, under the “Isaac Goldstein” name, Respondent has demonstrated a pattern of bad faith registration and use. See Wells Fargo v. Goldstein, FA 1321448 (Nat. Arb. Forum June 9, 2010); see also Zevex, Inc. v. Goldstein, FA 1323005 (Nat. Arb. Forum June 15, 2010); see also Gedex Inc. v. Goldstein, FA 1332191 (Nat. Arb. Forum Aug. 11, 2010). The Panel notes that Complainant lists further UDRP cases involving “Isaac Goldstein” in the Complaint. The Panel determines that Respondent is actually “Isaac Goldstein,” and concludes that Respondent registered and uses the <guate2night.com> domain name as a part of a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Complainant does not argue bad faith relating to Complainant’s use of the disputed domain names. However, the Panel determines that Respondent’s prior and current uses of the <guate2night.com> domain name resulted in Respondent’s receipt of commercial gain. The Panel also notes that Respondent registered a disputed domain name that is identical to Complainant’s GUATE2NIGHT.COM & Design mark and formerly belonged to Complainant, which the Panel infers creates Internet user confusion as to Complainant’s affiliation with the disputed domain name. The Panel finds that Respondent is attempting to create Internet user confusion and is attempting to profit from that confusion. The Panel holds that Respondent registered and uses the <guate2night.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant contends that it formerly owned the <guate2night.com> domain name and inadvertently allowed its registration to expire. Complainant argues that Respondent registered the disputed domain name on or after November 8, 2010, when Complainant inadvertently allowed its domain registration to lapse. Complainant alleges that Respondent’s registration and use of the <guate2night.com> domain name after Complainant inadvertently allowed the registration to lapse are evidence of bad faith. The Panel agrees and finds bad faith registration and use under Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guate2night.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 16, 2012
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