Licorera Zacapaneca S.A. v. James Rawlins
Claim Number: FA0705000992270
Complainant is Licorera Zacapaneca, S.A. (“Complainant”), represented by Jason
D. Voight, 1012 14th Street NW, Suite 620, Washington, DC 20005. Respondent is James Rawlins (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ronzacapacentenario.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 19, 2007 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@ronzacapacentenario.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <ronzacapacentenario.com> domain name is identical to Complainant’s RON ZACAPA CENTENARIO mark.
2. Respondent does not have any rights or legitimate interests in the <ronzacapacentenario.com> domain name.
3. Respondent registered and used the <ronzacapacentenario.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Licorera
Zacapaneca S.A., is a producer and seller of rum. Complainant utilizes two marks in connection
with its product, ZACAPA CENTENARIO and RON ZACAPA CENTENARIO. Complainant has registered both marks with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,731,470
issued November 10, 1992 and Reg. No. 2,645,445 issued November 5, 2002, filed
June 11, 2001 respectively).
Respondent registered the <ronzacapacentenario.com>
domain name on
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 RON ZACAPA
CENTENARIO mark for the purposes of Policy ¶ 4(a)(i) by virtue of its service mark
registration with the United States Patent and Trademark Office (“USPTO”). See
UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007)
(finding “no difficulty” in holding that the complainant had established rights
in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its
trademark registrations with the USPTO); see
also Bloomberg L.P. v. Johnston,
FA 760084 (Nat. Arb. Forum
Additionally, the Panel holds that Complainant’s rights in
the RON ZACAPA CENTENARIO mark date back to the filing date of the service mark
application with the USPTO, which is
Complainant has alleged, and the Panel so finds, that the <ronzacapacentenario.com> domain name
is identical to Complainant’s RON ZACAPA CENTENARIO mark under Policy ¶
4(a)(i). The elimination of the spaces
between the words of the mark, as well as the addition of the generic top-level
domain (“gTLD”) “.com” do not prevent a finding that the mark and disputed
domain name are identical, as both alterations to the mark are necessary
elements of any domain name. See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must establish a prima facie case that Respondent lacks rights and legitimate interests in the <ronzacapacentenario.com> domain name. Once Complainant has met this burden, the burden then shifts to Respondent to put forth evidence to this effect. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Complainant has successfully met this prima facie burden through the evidence presented to the Panel. However, the Panel will now examine the evidence to see if Respondent has any rights or legitimate interests in the <ronzacapacentenario.com> domain name under Policy ¶ 4(c).
Respondent’s WHOIS information lists Respondent as “James Rawlins” and there is no other evidence to suggest that Respondent is commonly known by the disputed domain name. Moreover, Complainant contends that Respondent is not authorized to use its mark in any way. Accordingly, the Panel finds that Respondent is not commonly known by the <ronzacapacentenario.com> domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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).
Respondent is using the <ronzacapacentenario.com> domain name to sell Complainant’s alcoholic beverages, as well as other, unrelated material goods. The Panel finds that the use of Complainant’s mark to sell Complainant’s products without the permission of Complainant is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <ronzacapacentenario.com>
domain name resolves to a website that sells various goods, including
Complainant’s alcoholic beverages. The
Panel finds that such use of Complainant’s mark is for Respondent’s own
commercial benefit, as it attempts to benefit by selling Complainant’s
products. Such use of the disputed
domain name constitutes a disruption of Complainant’s business and is evidence
of bad faith registration and use under Policy ¶ 4(b)(iii). See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent
registered each of the disputed domain names in order to gain customers and to
disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR
equipment.”); see also G.D.
Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb.
Forum
As Respondent’s disputed domain name describes in detail Complainant’s products, while also offering them for sale to Internet users, the <ronzacapacentenario.com> domain name is capable of being confused as a domain name and resulting website that is affiliated with or sponsored by Complainant in some manner. Additionally, Respondent is obviously profiting from the disputed domain name as it offers various products for sale. Accordingly, the Panel finds evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See 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 Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
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 <ronzacapacentenario.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 28, 2007
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