SOCIEDAD PUERTO INDUSTRIAL AGUADULCE S.A. v. Santiago Tenorio / Elevation Labs LLC
Claim Number: FA1906001847726
Complainant is SOCIEDAD PUERTO INDUSTRIAL AGUADULCE S.A. (“Complainant”), represented by Carlos Carvajal, Bogota, Colombia. Respondent is Santiago Tenorio / Elevation Labs LLC (“Respondent”), represented by Marie-Alexis Valente, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aguadulcelng.com>, registered with Godaddy.Com, LLC.
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.
Eugene I. Low as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2019; the Forum received payment on June 13, 2019.
On June 14, 2019, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <aguadulcelng.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, 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 June 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2019 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@aguadulcelng.com. Also on June 18, 2019, 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 July 8, 2019.
Complainant filed Additional Submission on July 11, 2019.
On July 11, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eugene I. Low 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 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 operates in the transportation and port-related services industries. Complainant has rights in the AGUADULCE mark based upon its registration of the mark with the Industria y Comercio Superintendencia Colombia (e.g., Reg. No. 374,285 registered February 23, 2009). Respondent’s <aguadulcelng.com> domain name is identical or confusingly similar to Complainant’s AGUADULCE mark because it wholly incorporates Complainant’s AGUADULCE mark, and merely adds the generic term “lng.”
Respondent lacks rights or legitimate interests in the <aguadulcelng.com> domain name. Respondent is not authorized or licensed to use Complainant’s AGUADULCE mark and there is no evidence to suggest that the Respondent listed in the WHOIS record is commonly known by the disputed domain name. Respondent does not provide a legitimate, noncommercial fair use of the disputed domain name.
Respondent includes a picture of the Colombian AGUADULCE port on the resolving webpage which is clear evidence of intention to confuse consumers and misappropriate the prestige of the AGUADULCE mark. Respondent registered and uses the <aguadulcelng.com> domain name in bad faith because Respondent had actual knowledge of Complainant’s AGUADULCE mark prior to registering the disputed domain name.
B. Respondent
Respondent’s <aguadulcelng.com> domain name is not confusingly similar to Complainant’s AGUADULCE mark because Respondent uses the term “aguadulce” as a geographical indicator referring to the location of the Respondent’s liquefied natural gas (“LNG”) project on the AGUADULCE peninsula of Colombia. Complainant does not have exclusive rights in the AGUADULCE mark and Complainant’s rights in the mark are limited to certain designs in Colombia that contain the stylized version of the word.
Respondent is commonly known as its <aguadulcelng.com> domain name as the domain name is consistent with the name of Respondent’s business entity registered in Colombia. Respondent is a founding partner and sponsor of AGUADULCE LNG, S.A.S, the entity that is carrying out the LNG Project in the Aguadulce Peninsula. The <aguadulcelng.com> domain name was registered under Respondent’s personal GoDaddy account, as he is part of the founding team of the LNG Project and intends to transfer the Domain Name registration to AGUADULCE LNG, S.A.S.
Furthermore, Respondent argues it uses the <aguadulcelng.com> domain name to make a bona fide offering of goods or services by developing the LNG energy infrastructure project in the Aguadulce Peninsula region.
Respondent has not registered and used the <aguadulcelng.com> domain name in bad faith. Complainant and Respondent both use the AGUADULCE name to refer to the geographic location, so Complainant’s claim that Respondent uses the disputed domain name to exploit Complainant’s reputation is unfounded.
C. Complainant's Additional Submissions
Complainant is the owner and bona fide senior user of the “AGUADULCE” trade name. Complainant has been in business continuously since 1996 and has operated under the “AGUADULCE” name in Colombia since said date. Complainant’s substantial advertising of the AGUDADULCE marks have created significant goodwill and consumer recognition in Colombia, mainly regarding the operation and management of the AGUADULCE port, located in the coastal city of Buenaventura, Colombia.
The inclusion of the AGUADULCE term within the <aguadulcelng.com> domain name causes undue commercial harm to Complainant’s due to the dilution of the distinctiveness of its marks and the unfair exploitation of their prestige.
The gasification projects planned by the Colombian governmental authorities (mainly the Unidad de Planeación Minero Energética -UPME-), in which Respondent claims to be participating, are close to the area and fields in which the AGUADULCE port operates and the Complainant performs its business activities. Thus, the risk for confusion and misappropriation of the AGUADULCE marks reputation increases considerably.
The fact that the picture of AGUADULCE port, operated and managed by Complainant, was displayed within the website of the domain name in dispute evidences a clear intention to confuse consumers and misappropriate the prestige of the AGUADULCE trademarks by Respondent. Evidently, Respondent is aware of the Complainant's operations and reputation and is trying to misappropriate of the prestige and recognition of the AGUADULCE signs.
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.
Complainant asserts rights in the AGUADULCE mark based upon its registration of the mark with the Industria y Comercio Superintendencia Colombia (e.g., Reg. No. 374,285 registered February 23, 2009). Complainant also asserts rights and goodwill in the AGUADULCE mark/name by virtue of its use and advertising since 1996.
The Panel notices that the registered trademarks rely on by Complainant contain both textual and design elements, as follows [TRADEMARK VISUAL REPRESENTATIONS OMITTED]
The Panel observes that the text "AGUADULCE" comprises the dominant portion of these registered trademarks. On this basis, the Panel is satisfied that Complainant has rights in the AGUADULCE mark under this element.
However, while the presence of additional textual and design elements does not preclude the Panel from finding Complainant's rights in the AGUADULCE mark under this element, the existence of such additional elements would be relevant to the Panel’s assessment of the second and third elements, e.g., in considering possible legitimate trademark co-existence or scenarios where the textual elements correspond to a dictionary term or a geographical term.
Leaving that aside for a minute, Complainant argues Respondent’s <aguadulcelng.com> domain name is identical or confusingly similar to Complainant’s AGUADULCE mark because it wholly incorporates Complainant’s AGUADULCE mark, and merely adds the generic term “lng.” The Panel accepts this argument on confusing similarity on the basis that the addition of a relatively simple word "lng", being an indication of the goods or services that Respondent is engaged in, does not sufficiently distinguish the domain name from the Complainant’s AGUADULCE mark.
Therefore, the Panel considers that Complainant has satisfied this element.
The Panel considers that this element is not satisfied.
Respondent has adduced credible evidence that the <aguadulcelng.com> domain name is consistent with the name of Respondent’s business entity registered in Colombia. Respondent is a founding partner and sponsor of AGUADULCE LNG, S.A.S, the entity that is carrying out the LNG Project in the Aguadulce Peninsula. Furthermore, Respondent uses the term “aguadulce” as a geographical indicator referring to the location of the Respondent’s liquefied natural gas (“LNG”) project on the AGUADULCE peninsula of Colombia.
Respondent has also adduced evidence to show that Respondent uses the <aguadulcelng.com> domain name to make a bona fide offering of goods or services by developing the LNG energy infrastructure project in the Aguadulce Peninsula region in Colombia.
The Panel is satisfied that Respondent's evidence is sufficient to show its rights or legitimate interests in respect of the domain name.
The issue of bad faith registration and use becomes moot since the Panel found Respondent has rights or legitimate interests in the disputed domain name. However, for completeness, the Panel also finds that this element is not satisfied.
Among other evidence, Complainant relies on a picture of the Colombian AGUADULCE port which appeared on the resolving webpage of the disputed domain name. In response, Respondent asserts that the website does not currently include a photograph of the port of Aguadulce as presented in the Complaint, but instead depicts the Aguadulce Peninsula where Respondent is carrying out the LNG Project. It seems to be a matter of evidence whether Respondent's website did show such a picture (which the Panel is not equipped or expected to resolve). In any event, even if such a picture did appear on Respondent's website, this is not sufficient evidence to establish Respondent's bad faith. On this point, the Panel considers that the AGUADULCE name denotes or is at least capable of denoting a geographical origin. The Panel also considers that Complainant's transportation business and Respondent’s energy project are quite distinctive fields of business. In the absence of clear evidence showing Respondent's bad faith (e.g. using the disputed domain name to exploit or disrupt Complainant’s business), the Panel is not satisfied that Complaint has established Respondent's bad faith in registration and use of the domain name.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <aguadulcelng.com> domain name REMAIN WITH Respondent.
Eugene I. Low, Panelist
Dated: July 15, 2019
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