DuPreez International LLC DBA ROOISPRESSO v. ENERG d.o.o. C/O Erik Dimitrijevec.
Claim Number: FA1403001547673
Complainant is DuPreez International LLC DBA ROOISPRESSO (“Complainant”), represented by Jacques duPreez, Arizona, USA. Respondent is ENERG d.o.o. C/O Erik Dimitrijevec (“Respondent”), represented by Katja Kovacic of ITEM d.o.o., United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roispresso.com>, registered with Wild West Domains, LLC (“Disputed Domain Name”).
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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2014; the National Arbitration Forum received payment on March 10, 2014.
On March 10, 2014, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <roispresso.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 March 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2014 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@roispresso.com. Also on March 13, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on April 2, 2014.
On April 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered the disputed domain name in bad faith.
Complainant DuPreez International, known under the business name Rooispresso, is a producer and distributor of red espresso tea. Complainant is the owner of a U.S. Federal Trademark, Reg. No. 85,491,978, and a European Union Community Trade Mark, No. 011,702,685, in addition to other pending trademark applications, related to the trademark ROOISPRESSO (collectively “ROOISPRESSO Marks”). Complainant’s U.S. trademark application was its earliest submission for its ROOISPRESSO Marks and was filed on December 9, 2011. Complainant contends that it has continuously used its ROOISPRESSO Marks in the United States, Europe and around the world in reference to its red tea production since 2011. Complainant registered the domain name, <rooispresso.com>, on June 17, 2012. Complainant maintains that the registration of its ROOISPRESSO Marks and its domain name were made prior to the February 13, 2013 registration of the Disputed Domain Name.
Complainant contends that the Disputed Domain Name is confusingly similar to its ROOISPRESSO Marks because it merely removes an “o” in the Complainant’s ROOISPRESSO Marks.
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name because Respondent is not known by the Complainant’s ROOISPRESSO Marks. Complainant contends that Respondent has not acquired trademark rights in the Disputed Domain Name. Further, Complainant argues that Respondent admitted that it lacked any right to use the Complainant’s ROOISPRESSO Marks and agreed to change its name to ROIBESSO. Complainant asserts that it believed Respondent to be willing to change the Disputed Domain Name in good faith, but that Respondent failed to follow through on such changes.
Complainant further contends that Respondent has not used the Disputed Domain Name to offer bona fide goods and services or for a legitimate noncommercial or fair use, since Respondent uses the Disputed Domain Name to market a similar product in competition with Complainant.
Lastly, Complainant contends that Respondent’s registration and use of its ROOISPRESSO Marks was in bad faith because Respondent is intentionally diverting Internet traffic to Respondent’s website to sell its competitive product. Complainant contends that its customers sometimes end up at Respondent’s website and that is how Complainant originally became aware of the Disputed Domain Name. Complainant further alleges that Respondent’s initial agreement to change the Disputed Domain Name is an admission by Respondent of bad faith and evidence of its bad faith in fulfilling the promised name change.
B. Respondent
Respondent contends that it has rights in the Disputed Domain Name, which it alleges predate the Complainant’s trademark rights in Europe. Respondent applied to register the ROISPRESSO trademark in Slovenia on March 13, 2013 and subsequently obtained said registration on February 14, 2014. Further, Respondent contends that Complainant failed to prove that the Disputed Domain Name caused confusion among consumers, alleging it had not provided evidence that consumers were indeed searching for Complainant’s products yet buying Respondent’s products due to the Disputed Domain Name.
Respondent contends that it has rights and legitimate interests in the Disputed Domain Name and is making a bona fide offering of goods and services in connection with that name. Respondent supports this contention by citing that its business was established in September 1992. Further, Respondent alleges that it found no indication of the Complainant’s use of its ROOISPRESSO Marks in Europe when it registered the Disputed Domain Name since Complainant had yet to receive a trademark registration in Europe at that time. In addition, Respondent contends that it chose to associate its product, despite the similarity in name, with a distinctive graphic design on the website corresponding to the Disputed Domain Name. Respondent contends that its business came out publicly and openly.
Lastly, Respondent contends that it did not register the Disputed Domain Name in bad faith. Respondent argues that it is not disrupting Complainant’s business, but is, rather, welcoming competition on the market. Respondent argues that it is not intentionally attempting to attract Internet users to its site by creating a likelihood of confusion with Complainant’s Mark. In contrast, Respondent argues that it advertises its own goods and services on the website corresponding to the Dispute Domain Name, has never misled consumers to believe that Respondent is associated with Complainant, and clearly displays its own distributors on its website. In addition, Respondent argues that its former conflict with Nestle over a trademark is indirect evidence that Respondent was not aware of Complainant’s brand at the time of the Disputed Domain Name registration. Finally, Respondent denies that it agreed to change the Disputed Domain Name as Complainant alleges.
Complainant is the owner of registrations for the ROOISPRESSO Marks in the United States and Europe. See USPTO Reg. No. 85/491,978 published May 15, 2012, registered April 10, 2014; see also OHIM Reg. No. 011,702,685 registered Jul. 18, 2013. Complainant registered the domain name <rooispresso.com> on June 17, 2012.
Respondent is the owner of a registration for the ROISPRESSO trademark in Slovenia. See SIPO Reg. NO. 201, 370, 205 registered Feb. 14 2014; see also Respondent’s Annex 1.
Respondent registered the Disputed Domain Name on February 13, 2013.
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."
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.
As stated above, Complainant has rights to the ROOISPRESSO Marks in both the United States and Europe. Prior panels have found that a complainant has rights in a mark where it can provide evidence of its registration with a recognized trademark authority. See Argenta Spaarbank NV v. Argenta, Mailadmin Ltd, D2009-0249 (WIPO June 8, 2009)(finding that Complainant has provided evidence of a trademark registration with the OHIM and has thus established rights in the mark); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). Here, Complainant has demonstrated evidence of registration with both the USPTO and OHIM.
Moreover, it is irrelevant whether Complainant registered its ROOISPRESSO Marks in the Respondent’s location. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007)(finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction.).
Complainant’s rights date back to the Complainant’s filing date of its intent-to-use trademark application in the United States. See Hershey Co. v. Reaves, FA967818 (Nat. Arb. Forum June 8, 2007)(finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Consequently, this Panel concludes that Complainant’s rights in the ROOISPRESSO Marks date back to Complainant’s December 9, 2011 filing date with the USPTO.
The Disputed Domain Name, <roispresso.com>, consists of the Complainant’s ROOISPRESSO Marks with the omission of a single “o” and the addition of the generic top-level domain “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “roispresso”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Moreover, the omission of a single letter does not mitigate the confusing similarity between the Disputed Domain Name and the Complainant’s ROOISPRESSO Marks. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, since the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006)(holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s Marks.
Under Policy ¶ 4(c), Respondent may demonstrate rights or legitimate interests in the Disputed Domain Names by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
A Complainant must make a prima facie case that Respondent lacks rights and legitimate interests before the burden shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the <roispresso.com> domain name under Policy ¶ 4(a)(ii). Complainant asserts that Respondent is not commonly known by the Disputed Domain Name and has not acquired trademark rights in the Disputed Domain Name. However, Complainant failed to acknowledge or address Respondent’s registered trademark in Slovenia. Complainant also failed to address Respondent’s contentions that it is commonly known in Slovenia and Great Britain due to three months of use and publicity prior to notification of the dispute. Consequently, the Panel finds that Complainant has not met its burden of demonstrating that Respondent lacks rights or legitimate interests in the Disputed Domain Name as required by Policy ¶ 4(a)(ii). See AST Sportswear, Inc. v. Steven R. Hyken, D2001-1324 (WIPO Mar. 26, 2002)( Pursuant to Policy language, “if Respondent ‘proves’ that he has ‘been commonly known by the domain name, even if [he has] acquired no trademark or service mark rights,’ the Panel ‘shall’ find that Respondent has a legitimate interest. Policy ¶ 4(c)(ii). Significantly, that section of the Policy contains no restrictions on the type of use of the domain name that is acceptable or legitimate. In contrast, the other examples of legitimate interest include an analysis of market-based factors: paragraph 4(c)(i) applies only if there is a "bona fide offering of goods and services," and paragraph 4(c)(iii) applies only if there is ‘noncommercial or fair use of the domain name, without intent for commercial gain.’ Thus, even if Respondent were selling Johnny Blaze clothing on the site in a way that infringed Complainant’s trademark rights (which would vitiate any claim of legitimate interest under paragraph 4(c)(iii)), the Policy would not provide a remedy if Respondent could prove a legitimate interest under paragraph 4(c)(ii); rather, Complainant would have to pursue its claims (whether of trademark infringement or cybersquatting) under the applicable national laws.”).
Since the Panel finds that Complainant failed to satisfy the requirements of ¶ 4(a)(ii) of the Policy, the Panel does not need to reach the issue of bad faith registration and use. The Panel notes, with some concern, that the evidence appears to indicate that Respondent indeed agreed to change its domain name, and has failed to do so. It is not, however, within the jurisdiction of this Panel under the Policy to enforce contractual agreements. Any claim that Complainant may wish to advance regarding that issue will need to be brought in an appropriate court with jurisdiction over such claims.
Complainant 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 <roispresso.com> domain name REMAIN WITH Respondent.
Michael A. Albert, Panelist
Dated: April 21, 2014
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