Pidela Holdings Inc. v. Purple Bucquet / Purple
Claim Number: FA 1356856
Complainant is Pidela Holdings Inc. (“Complainant”), represented by Patrick J. O’Connor of Harper Meyer Perez Hagen O’Connor Albert & Dribin LLP, Florida, USA. Respondent is Purple Bucquet / Purple (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rumberanetwork.com>, registered with Power Brand Center Corp.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2010; the National Arbitration Forum received payment on November 5, 2010.
On November 18, 2010, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <rumberanetwork.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the names. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 November 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 2010 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@rumberanetwork.com. Also on November 23, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 December 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rumberanetwork.com> domain name is identical to Complainant’s RUMBERA NETWORK mark.
2. Respondent does not have any rights or legitimate interests in the <rumberanetwork.com> domain name.
3. Respondent registered and used the <rumberanetwork.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pidela Holdings Inc., is a provider of radio broadcast services in Venezuela, Panama, the Caribbean, and Spain, as well as web broadcastings worldwide under its RUMBERA NETWORK mark. Complainant has registered its RUMBERA NETWORK mark with Panama’s Registro de la Propiedad Industrial (Reg. No. 190,043 issued May 17, 2010).
Respondent, Purple Bucquet / Purple, registered the disputed domain name on August 18, 2004. Respondent’s disputed domain name resolves to a website that features links to products and services similar to those provided by Complainant.
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 asserts rights in its RUMBERA NETWORK mark based on its registration of the mark with Panama’s Registro de la Propiedad Industrial (Reg. No. 190,043 issued May 17, 2010). Previous panels have held that registration of a mark with a governmental trademark authority is evidence sufficient to establish a complainant’s rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has rights in its RUMBERA NETWORK mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <rumberanetwork.com> domain name is identical to Complainant’s RUMBERA NETWORK mark. The disputed domain name merely eliminates the space between the terms of Complainant’s mark and appends the generic top-level domain (“gTLD”) “.com.” The Panel finds that such minor alterations are so insignificant as to render the disputed domain name identical to Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), the burden to prove that it has rights or legitimate interests in the disputed domain name shifts to Respondent upon Complainant’s presentation of a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that based on the arguments made in the Complaint, Complainant has made a prima facie case as to Respondent’s lack of rights and legitimate interests in the disputed domain name. The Panel notes that Respondent has failed to submit a Response to these proceedings. The Panel is able to infer from Respondent’s lack of a response that the allegations set forth by Complainant are true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). However, the Panel in this case elects to consider the evidence on record in light of the Policy ¶ 4(c) factors in order to make a determination regarding Respondent’s rights or legitimate interests in the <rumberanetwork.com> domain name.
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name indicates that the registrant of the name is “Purple Bucquet / Purple.” The Panel finds that the WHOIS information adequately supports Complainant’s assertion that Respondent is not commonly known by the disputed domain name. In addition to the WHOIS information, Complainant asserts that Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s RUMBERA NETWORK mark. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant submits evidence in the form of screenshots of Respondent’s resolving website which it uses to support its allegations that Respondent lacks rights and legitimate interests in the disputed domain name. The screenshots submitted by Complainant show Respondent’s resolving website containing links to products and services similar to those offered by Complainant under its RUMBERA NETWORK. The Panel finds that Respondent’s use of the disputed domain name for such a purpose is not associated with either 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the <rumberanetwork.com> domain name on August 18, 2004. Complainant has only provided evidence of its trademark registration dating back to May 17, 2010. Respondent’s registration of the disputed domain name effectively predates Complainant’s established rights in the mark. Therefore, the Panel finds that Respondent could not have registered the disputed domain name in bad faith. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <rumberanetwork.com> domain name REMAIN WITH Respondent.
Judge Harold Kalina (Ret.), Panelist
Dated: December 31, 2010
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