EcuaBIRM Cia. Ltda. and Edwin Cevallos Arellano v. Pete Thomas
Claim Number: FA0606000732860
Complainants are EcuaBIRM Cia. Ltda. and Edwin Cevallos (collectively “Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., 8411 Preston Road, Suite 890, Dallas, TX 75225, USA. Respondent is Pete Thomas (“Respondent”), 126 North Broad Street, Thomasville, GA 31792.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <birm.com>, registered with 007Names, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 16, 2006.
On June 16, 2006, 007Names, Inc. confirmed by e-mail to the National Arbitration Forum that the <birm.com> domain name is registered with 007Names, Inc. and that Respondent is the current registrant of the name. 007Names, Inc. has verified that Respondent is bound by the 007Names, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 10, 2006 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@birm.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 17, 2006, 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." 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. Respondent’s <birm.com> domain name is identical to Complainant’s BIRM mark.
2. Respondent does not have any rights or legitimate interests in the <birm.com> domain name.
3. Respondent registered and used the <birm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Edwin Cevallos Arellano, is the principal for Complainant, EcuaBIRM Cia. Ltda. These two entities will be collectively referred to as “Complainant.” Complainant manufactures and sells natural dietary supplements and herbal extracts in liquid, cream, pill and shampoo form. The natural compound Biological Immune Response Modulator (“BIRM”) is they key ingredient in Complainant’s products. In connection with the manufacture and sale of these dietary supplements containing BIRM, Complainant has registered the BIRM mark in Ecuador (Reg. No. 110,758 issued May 15, 2001), Germany (Reg. No. 395,122,619 issued on March 22, 1995), Australia (Reg. No. 1,051,750 issued on April 20, 2005) and Mexico (Reg. No. 883,726 issued on May 27, 2005). Complainant has also applied to the United States Patent and Trademark Office (“USPTO”) to register the BIRM mark in the United States (application filed September 23, 2004). Complainant has registered the <ecuabirm.com> domain name to use in connection with offering Complainant’s goods and services to Internet users with both English and Spanish language versions of Complainant’s website.
Respondent registered the <birm.com> domain name on May 30, 2000. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which offers Complainant’s goods and services, or similar goods and services, for sale in direct competition with Complainant. Respondent was formerly an authorized distributor of Complainant’s goods, but that authorization has been terminated. Respondent was never authorized to register or use a domain name incorporating Complainant’s BIRM mark.
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 has established rights in the BIRM mark through registration of the mark with multiple government authorities. While Complainant does not yet have a trademark registration for the BIRM mark in the United States, where Respondent operates, Complainant does hold registrations in Ecuador, the country in which Complainant operates, as well as in other jurisdictions. The Panel finds that such registrations are sufficient for Complainant to establish rights in the BIRM mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <birm.com> domain name is
identical to Complainant’s BIRM mark.
The disputed domain name incorporates Complainant’s mark in its entirety
without any additions or alterations except for the generic top-level domain
“.com.” Because all domain names
require a top-level domain, the addition of a top-level domain is not a
distinguishing characteristic. The
Panel finds that the disputed domain name is identical to Complainant’s mark pursuant
to Policy ¶ 4(a)(i). See
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also Sporty's Farm L.L.C. vs. Sportsman's Mkt.,
Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262
(2000), ("For consumers to buy things or gather information on the
Internet, they need an easy way to find particular companies or brand names.
The most common method of locating an unknown domain name is simply to type in
the company name or logo with the suffix .com.").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
By asserting that Respondent lacks rights or legitimate interests in the <birm.com> domain name, Complainant creates a prima facie case. The establishment of a prima facie case, in turn, shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). When Respondent fails to avail itself of the opportunity to file a Response to further its cause, the Panel may view Respondent’s failure to respond as evidence that Respondent does, in fact, lack rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the <birm.com> domain name pursuant to Policy ¶ 4(c).
Respondent’s <birm.com> domain name is identical to Complainant’s mark and Respondent is using the <birm.com> domain name to redirect Internet users to Respondent’s website which purports to offer for sale Complainant’s goods and services, or similar goods and services, in direct competition with Complainant. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
There is no evidence available to the Panel indicating that Respondent is commonly known by the <birm.com> domain name. Respondent’s WHOIS information identifies Respondent as “Pete Thomas.” Further, Complainant asserts that Respondent is not authorized to use Complainant’s mark in a domain name, and Respondent is no longer a distributor of Complainants goods and services or affiliated with Complainant in any way. The Panel finds that Respondent is not commonly known by the disputed domain name and thus, lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). 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 Policy ¶ 4(c)(ii) does not apply); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <birm.com> domain name to redirect Internet users to Respondent’s website which purports to offer Complainant’s goods and services for sale. Whether Respondent is actually providing Complainant’s goods and services, or is instead passing off similar goods and services under Complainant’s mark is unclear. Regardless, Complainant asserts that Respondent no longer has a distributorship relationship with Complainant, and thus Respondent is selling Complainant’s goods and services, or similar goods and services, in direct competition with Complainant. The Panel finds such use disrupts the business of Complainant and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Respondent’s <birm.com> domain name is
identical to Complainant’s BIRM mark.
It is reasonable to assume that Internet users seeking Complainant’s
goods and services could easily find themselves redirected to Respondent’s
website. Once at Respondent’s website,
because the disputed domain name is identical to Complainant’s mark, Internet
users may mistakenly believe that Respondent is sponsored by or affiliated with
Complainant. This confusion is further
increased because Respondent’s website purports to offer Complainant’s goods
and services. The Panel find’s that
Respondent’s use of a domain name identical to Complainant’s to attract
Internet users to Respondent’s website selling goods and services in
competition with Complainant is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS,
FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the
respondent used the disputed domain name to sell the complainant’s products
without permission and mislead Internet users by implying that the respondent
was affiliated with the complainant); see
also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22,
2003) (“The contents of the website, offering Usag products, together with the
domain name may create the (incorrect) impression that Respondent is either the
exclusive distributor or a subsidiary of Complainant, or at the very least that
Complainant has approved its use of the domain name.”); see also
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (finding that the respondent’s use of the <saflock.com> domain name
to offer goods competing with the complainant’s illustrates the respondent’s
bad faith registration and use of the domain name, evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel is not limited to the elements described in Policy
¶¶ 4(b)(i)-(iv) in finding evidence of bad faith registration and use. The Panel may find that other uses not
spelled out in the Policy are evidence of bad faith use and registration,
including evidence that Respondent had actual or constructive knowledge of
Complainant’s rights in the mark and registered the disputed domain name,
identical to Complainant’s mark, despite that knowledge. Respondent previously had a distributorship
agreement with Complainant and thus, had actual knowledge of Complainant’s
rights in the BIRM mark. The Panel
finds that Respondent’s registration of the <birm.com> domain name
despite actual knowledge of Complainant’s rights in the mark is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Associated Materials, Inc v. Perma
Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that the
respondent’s actual knowledge of the complainant’s rights in the ULTRAGUARD
mark, inferred from the fact that the respondent was a distributor of the
complainant, along with the respondent being on notice of its own lack of
rights evidenced that the domain name was registered in bad faith);
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 <birm.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 31, 2006
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