01499485

national arbitration forum

 

DECISION

 

Co-Dependents Anonymous, Inc. v. CODA MEXICO / Fernando Jaramillo Becerra / Alejandra Luna / Rad Lab

Claim Number: FA1305001499485

PARTIES

Complainant is Co-Dependents Anonymous, Inc. (“Complainant”), represented by Adam Stephenson of Adam R. Stephenson, LTD., Arizona, USA.  Respondent is CODA MEXICO / Fernando Jaramillo Becerra / Alejandra Luna / Rad Lab (“Respondent”), Mexico.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain nameat issue is <codamexico.net> and <codamexico.org>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2013; the National Arbitration Forum received payment on May 13, 2013.

 

On May 14, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <codamexico.net> and <codamexico.org> domain names are registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names.  PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.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 May 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2013 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@codamexico.net, postmaster@codamexico.org.  Also on May 16, 2013, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 12, 2013, 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 any response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <codamexico.net> and <codamexico.org> domain names are confusingly similar to Complainant’s CODA mark.

 

2.    Respondent does not have any rights or legitimate interests in the  <codamexico.net> and <codamexico.org> domain names.

 

3.    Respondent registered and used the <codamexico.net> and <codamexico.org> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has registered its CODA mark with the United States Patent & Trademark Office (“USPTO”) (1,671,038 registered Jan. 7, 1992) and uses the mark to assist people with co-dependency issues.

 

Respondent registered the <codamexico.net> domain name on October 14, 2011, and the <codamexico.org> domain name on November 8, 2011.  Respondent was formerly associated with Complainant and registered the domain names without authorization from Complainant.  Respondent used the disputed domain names to advertise Complainant’s events after the association ended.  The domain names currently resolve to parked websites that include Respondent’s business at <codamexico.mex.tl>.

 

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.

 

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.”).

 

Preliminary Issue: Multiple Respondents

In the instant proceedings, Complainant has alleged that the entities controlling the domain names at issue are the same person and/or entity, operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant contends that CODA MEXICO, Fernando Jaramillo Becerra, Alejandra Luna, and Rad Lab, are a single Respondent.  Complainant notes that these domain names were registered within a month of each other, both domain names had websites that displayed the exact same content prior to being renewed in 2012, both domain names are registered with PDR LTD., both domains were hosted on the same server in October 2012, and both domain names had registrants who failed to pay the renewal fees at about the same time.  Complainant states that Respondent is a former employee of Complainant.  In the absence of a Response by Respondent, the Panel accepts Complainant’s evidence that the disputed domain names are controlled by the same entity and will proceed with this case.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has shown Policy ¶ 4(a)(i) rights in the CODA mark through its USPTO registrations, even though Respondent lives in Mexico.  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 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 Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Respondent’s <codamexico.net> and <codamexico.org> domain names take the entire CODA mark and add the term “mexico” and either the gTLD “.org” or “.net.”  The Panel finds that the gTLDs and the geographic descriptor “mexico” do not distinguish the disputed domain names from the CODA mark.  See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 <codamexico.net> and <codamexico.org> domain names.  Complainant notes that, although Respondent makes use of the phrase CODA MEXICO in the registration WHOIS information, such a use is not authorized by Complainant and is deceptive. The WHOIS records for these domain names make reference to “CODA MEXICO,” “Fernando Jaramillo Becerra,” “Alejandra Luna,” and “Rad Lab.”  The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii) when Respondent has no affiliation with Complainant, and the WHOIS information for the disputed domain names identifies unrelated registrants.  See 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 that it is commonly known by the domain name).

 

Complainant argues that Respondent used the domain names to host fliers for events, even though Respondent was no longer associated with Complainant. Complainant argues that these fliers contained Complainant’s marks, and advertised Complainant’s events, and continued long after Respondent was removed from Complainant’s organization.  The Panel finds that unauthorized use of another’s mark is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.  See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).

 

The Panel notes that <codamexico.net> domain name currently resolves to a parked website with hyperlinks.  The Panel finds that holding that domain name without the consent or authorization of Complainant 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.  See Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Nat. Arb. Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark); see also State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat.Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site.  Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).  The Panel finds that using the domain name for hyperlinks also fails to demonstrate Respondent’s ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.  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 contends that Respondent was formerly associated with Complainant, but has since started its own unauthorized and rogue use of the CODA mark.  Complainant alleges that Respondent had no independent rights in the CODA mark, and merely served as a representative of Complainant.  Complainant argues that, due to Respondent’s failure to pay renewal fees, the <codamexico.org> domain name presently resolves to an inactive website.  The Panel finds that this further demonstrates Respondent’s lack of rights and legitimate interests in the <codamexico.org> domain name.  See Nasaco Elecs. Pte Ltd. v. A&O Computer AG, D2000-0374 (WIPO July 14, 2000) (finding that the respondent has no rights or legitimate interests in the domain name where the respondent’s former employee registered the domain name and transferred it to the respondent, who has since made no use of the domain name).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent has somehow offered the domain name for sale in bad faith.  The Panel finds, however, that Complainant failed to provide any evidence of any offer for sale by Respondent, and therefore there are no grounds for finding bad faith under Policy ¶ 4(b)(i).

 

Respondent registered the <codamexico.net> and <codamexico.org> domain names without authorization to use the CODA mark, an indication of bad faith under Policy ¶ 4(b)(ii).  See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark); see also Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where the respondent was formerly employed by the complainant, was fully aware of the name of her employer, and made no use of the infringing domain name).

 

Complainant argues that Respondent registered these domain names to turn the domain names into venues for Complainant’s competitors.  Complainant contends that Respondent linked the disputed domain names to Respondent’s <codamexico.mex.tl> domain name, where competitive goods and services are solicited by Respondent.  The Panel notes that the website resolving from the <codamexico.mex.tl> domain name includes links to products and services competing with those of Complainant.  The Panel finds that this use is evidence of a Policy ¶ 4(b)(iii) disruption of Complainant’s business.  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant also argues that Respondent seeks to confuse Internet users into believing the <codamexico.net> and <codamexico.org> domain names are affiliated with Complainant, including distributing fliers about a co-dependency conference being held in Mexico by Complainant.  Complainant argues that Respondent represents itself as an official vendor of tickets to its events.  The Panel agrees that Respondent’s use of the disputed domain names is confusing Internet users by representing that Respondent is affiliated with Complainant, bad faith under Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).  

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <codamexico.net> and <codamexico.org> domain name be TRANSFERRED from Respondent to Complainant.

 

Sandra J. Franklin, Panelist

Dated:  June 19, 2013

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page