Mamacita's v. Mamacitas c/o Web Master
Claim
Number: FA0504000464575
Complainant is Mamacita's (“Complainant”), represented
by Dwayne K. Goetzel, 700 Lavaca, Suite 800, Austin, TX,
78701. Respondent is Mamacitas c/o Web Master (“Respondent”)
General Delivery, Georgetown, Grand Cayman GT, KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <mamacitas.com>, registered with Address
Creation.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically April
18, 2005; the National Arbitration Forum received a hard copy of the Complaint April
19, 2005.
On
April 21, 2005, Address Creation confirmed by e-mail to the National
Arbitration Forum that the domain name <mamacitas.com> is
registered with Address Creation and that Respondent is the current registrant
of the name. Address Creation verified
that Respondent is bound by the Address Creation registration agreement and
thereby has agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
April 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 2005, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@mamacitas.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 19. 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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." 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <mamacitas.com>, is confusingly similar to
Complainant’s MAMACITA’S MEXICAN RESTAURANT mark.
2. Respondent does not have any rights or
legitimate interests in the <mamacitas.com> domain name.
3. Respondent registered and used the <mamacitas.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
Mamacita’s is a Texas partnership engaged, since at least 1987, providing
Mexican food, services, catering, clothing and drink mixers.
Complainant
registered the MAMACITA’S MEXICAN RESTAURANT mark with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 2,593,367 issued July 16, 2002).
Respondent
registered the <mamacitas.com> domain name August 19, 2003. The disputed domain name resolves to a
website that features links to various unrelated commercial websites, including
adult-oriented websites.
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 as the Panel considers appropriate pursuant to paragraph
14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established using extrinsic proof in this proceeding that it has rights in the
MAMACITA’s MEXICAN RESTAURANT mark through registration of the mark with the
USPTO. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
The domain name that Respondent registered, <mamacitas.com>,
is confusingly similar to Complainant’s MAMACITA’S MEXICAN RESTAURANT
mark. Respondent’s domain name
incorporates the dominant feature of Complainant’s mark, specifically the term
“mamacita’s” and omits the terms “mexican” and “restaurant.” Additionally, Respondent’s domain name omits
the apostrophe from Complainant’s mark and adds the generic top-level domain
“.com.” The Panel finds that such minor
changes are insufficient to negate the confusing similarity between
Respondent’s domain name and Complainant’s mark pursuant to Policy ¶
4(a)(i). See WestJet
Air Ctr., Inc. v. W. Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com>
domain name is confusingly similar to the complainant’s mark, where the
complainant holds the WEST JET AIR CENTER mark); see also Wellness Int’l Network, LTD v.
Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the
domain name <wellness-international.com> is confusingly similar to the
complainant’s “Wellness International Network”); see also Chi-Chi’s, Inc. v. Rest. Commentary,
D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to
be identical to the complainant’s CHI-CHI’S mark, despite the omission of the
apostrophe and hyphen from the mark); see also Isleworth Land Co. v. Lost in
Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established its rights and interests in the mark contained in part in the
disputed domain name and Complainant alleges that Respondent has no such rights
and interests. Respondent did not
respond to the Complaint. Therefore,
the Panel accepts all reasonable allegations and assertions set forth by
Complainant as true and accurate. 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 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.”).
Further,
Complainant’s assertion that Respondent has no rights or legitimate interests
in the disputed domain name puts the burden on Respondent to rebut this
allegation. Since Respondent failed to
file a response, the Panel construes Respondent’s failure to respond as
evidence that Respondent lacks rights and legitimate interests in the <mamacitas.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a Response, Respondent has failed to invoke any circumstance which
could demonstrate any rights or legitimate interests in the domain name); see
also Bank of Am. Corp. v.
McCall,
FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”).
Respondent is
using the confusingly similar domain name to operate a website that features
links to various unrelated commercial websites, including websites that feature
adult-oriented material. The Panel
infers that Respondent receives click-through fees for diverting Internet users
to these websites. Such diversionary
use is not a use in connection with 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). See
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that the respondent’s use of the disputed domain name to redirect
Internet users to websites unrelated to the complainant’s mark, websites where
the respondent presumably receives a referral fee for each misdirected Internet
user, was not a bona fide offering of goods or services as contemplated by the
Policy); see also Disney
Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)
(finding that the respondent’s diversionary use of the complainant’s mark to
attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the disputed domain
names); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum
Nov. 15, 2002) (holding that the use of a domain name that is confusingly
similar to an established mark to divert Internet users to an adult-oriented
website “tarnishes Complainant’s mark and does not evidence noncommercial or
fair use of the domain name by a respondent”); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11,
2000) (finding that it is not a bona fide offering of goods or services to use
a domain name for commercial gain by attracting Internet users to third party
sites offering sexually explicit and pornographic material where such use is
calculated to mislead consumers and to tarnish the complainant’s mark).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring versions
of Complainant’s MAMACITA’S MEXICAN RESTAURANT mark. Thus, the Panel finds that Respondent has not established rights
or legitimate interests in the <mamacitas.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see
also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in the respondent’s WHOIS information implies that the
respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to the
various unrelated commercial websites.
Because Respondent’s <mamacitas.com> domain name is
confusingly similar to Complainant’s MAMACITA’S MEXICAN RESTAURANT mark,
consumers accessing Respondent’s domain name may become confused as to
Complainant’s affiliation with the resulting website. The Panel finds that Respondent’s commercial use of the disputed
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant’s mark when the domain name
resolves to commercial websites and the respondent fails to contest the
Complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain).
Additionally,
the fact that Respondent’s <mamacitas.com> domain name features
links to adult-oriented websites is evidence that Respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night
Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect
Internet users to adult-oriented websites was evidence that the domain names
were being used in bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000)
(finding bad faith where the respondent attracted users to its website for
commercial gain and linked its website to pornographic websites).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <mamacitas.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 2, 2005
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