SAN PATRICK, S.L. v. T & Y Photography
c/o Tomas Benitex
Claim Number: FA0610000827647
PARTIES
Complainant is SAN PATRICK, S.L.,
Barcelona (“Complainant”) represented by Paz
Martin, of HERRERO & ASOCIADOS. Respondent is T & Y Photography c/o Tomas Benitex, Middletown, CT
(“Respondent”) , of T & Y Photography c/o Tomas Benitex.
The domain name at issue is <pronovias.us>,
registered with Wild West Domains, Inc.
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.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the
“Forum”) electronically on October 25, 2006; the Forum received a hard copy of
the Complaint on October 30, 2006.
On October 25, 2006, Wild West Domains, Inc. confirmed by e-mail to the
Forum that the <pronovias.us>
domain name is registered with Wild West Domains, Inc. and that
Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by
the Wild West Domains, Inc. registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with the U.
S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 3, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 24, 2006 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of
the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On November 29, 2006, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Louis E. Condon
as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in accordance
with the Policy, the Rules, the 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 name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <pronovias.us> domain name is identical to Complainant’s PRONOVIAS mark.
2.
Respondent does not have any rights or legitimate
interests in the <pronovias.us> domain name.
3.
Respondent registered and used the <pronovias.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, San Patrick, S.L., holds a
registration with the United States Patent and Trademark Office (“USPTO”) for
the PRONOVIAS mark (Reg. No. 2,486,437 issued September 11, 2001). Complainant utilizes the PRONOVIAS mark in
connection with its business as a manufacturer and retailer of wedding dresses. Complainant includes the PRONOVIAS mark in
its registered domain name, <pronovias.com>.
Respondent registered the <pronovias.us>
domain name February 19, 2003.
Respondent is using the disputed domain name to redirect Internet users
to Respondents website. Respondent’s
commercial website advertises Respondent’s services as a wedding
photographer. Respondent’s website also
includes numerous third-party links to wedding dress manufacturers and
retailers in direct competition with Complainant.
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.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has established rights in the
PRONOVIAS mark through registration of the mark with the USPTO. The Panel finds that Complainant’s
registration satisfies the requirements of Policy ¶ 4(a)(i). 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
[or] have acquired secondary meaning.”); see also Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”).
Respondent’s <pronovias.us> domain
name is identical to Complainant’s PRONOVIAS mark. The disputed domain name includes Complainant’s mark in its
entirety without alteration. The
addition of the generic top-level domain “.us” does not distinguish the
disputed domain name from Complainant’s mark, as a top-level domain is required
for all domain names. Indeed, the
addition of the “.us” top-level domain makes it appear that Respondent’s
website is the United States website for Complainant’s business. The Panel finds that the disputed domain
name is identical to Complainant’s mark.
See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb.
Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us”
fails to add any distinguishing characteristic to the domain name, the
<tropar.us> domain name is identical to the complainant’s TROPAR mark); see
also 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).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant asserts that Respondent lacks rights and legitimate interests in the <pronovias.us> domain name. Complainant’s assertion establishes a prima facie case in support of its allegations, shifting the burden to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent’s failure to answer the
Complaint raises a presumption that Respondent has no rights or legitimate
interests in the <pronovias.us>
domain name. See 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.”); see also Eroski,
So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003)
(“It can be inferred that by defaulting Respondent showed nothing else but an
absolute lack of interest on the domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Because Complainant has established
rights to the PRONOVIAS mark and Respondent has not come forward with any
evidence showing it is the owner or beneficiary of a mark identical to the <pronovias.us> domain name,
Complainant has satisfied Policy ¶ 4(c)(i).
See Meow Media Inc. v. John Basil a/k/a American
Software Factory Corp., Inc.,
FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence
that Respondent was the owner or beneficiary of a mark that is identical to the
<persiankitty.com> domain name); see also Pepsico, Inc.
v. Becky a/k/a Joe Cutroni, FA
117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not
own any trademarks or service marks reflecting the <pepsicola.us> domain
name, it had no rights or legitimate interests pursuant to Policy ¶
4(c)(i)).
There is no available evidence that Respondent is commonly known by the <pronovias.com> domain name. Respondent’s WHOIS information identifies Respondent as “Thomas Benitex,” a name with no connection to the disputed domain name. Consequently, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(iii). 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 UDRP ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent is using
the <pronovias.com> domain name to redirect Internet users to its
commercial website. Respondent is
capitalizing on the fame of Complainant’s mark in relation to the wedding
industry to offer wedding photography services. Respondent’s website also includes links to third-party websites
offering wedding dresses in direct competition with Complainant. Presumably, Respondent is profiting from
these links by receiving pay-per-click referral fees. The Panel finds that Respondent’s use of the
disputed domain name does not constitute a bona fide offering of goods
or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial fair use
pursuant to Policy ¶ 4(c)(iv). See
G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002)
(finding that because the respondent is using the infringing domain name to
sell prescription drugs, the panel could infer that the respondent is using the
complainant’s mark to attract Internet users to its website for commercial
benefit); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has
been satisfied.
Registration and Use in Bad Faith
Respondent is using the <pronovias.com> domain name to redirect Internet users to its commercial website. In addition to advertising Respondent’s services as a wedding photographer, Respondent’s website also includes third-party links to websites offering wedding dresses in direct competition with Complainant. Internet users seeking Complainant’s genuine website at <pronovias.com> may instead find themselves at Respondent’s website, mistakenly believing that the <pronovias.com> domain name is the United States website of Complainant. When confronted with Respondent’s third-party links after being misdirected to Respondent’s website, Internet users may follow those links and do business with Complainant’s competitors instead of with Complainant, thus disrupting Complainant’s business. The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s <pronovias.com> domain name is identical to Complainant’s
PRONOVIAS mark. Internet users seeking
Complainant’s genuine website may instead find themselves at Respondent’s
website. Because the disputed domain
name contains Complainant’s mark in its entirety in connection with the
top-level domain “.us,” Internet users may believe that Respondent’s website is
the United States website of Complainant.
Respondent is capitalizing on this confusion by running a commercial
website with a wedding related theme, thus capitalizing on the goodwill related
to Complainant’s PRONOVIAS mark.
Further, Respondent includes third-party links on its websites which
presumably generate revenue for Respondent.
The Panel finds that such use is evidence of bad faith registration and
use 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); see also TM
Acquisition Corp. v. Warren, FA 204147
(Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal
website is <century21.com>, many Internet users are likely to use search
engines to find Complainant’s website, only to be mislead to Respondent’s
website at the <century21realty.biz> domain name, which features links
for competing real estate websites.
Therefore, it is likely that Internet users seeking Complainant’s
website, but who end up at Respondent’s website, will be confused as to the
source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel finds that Policy ¶ 4(a)(iii) has
been satisfied.
DECISION
Complainant having established all three
elements required under the usTLD Policy, the Panel concludes that relief
should be GRANTED.
Accordingly, it is Ordered that the <pronovias.us> domain name be TRANSFERRED from
Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 13, 2006
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