Escobar, Inc. v. Neil Okrent / Ivan Munguia
Claim Number: FA1908001859584
Complainant is Escobar, Inc. (“Complainant”), represented by Adriano Pacifici of Intellectual Property Consulting, LLC, Puerto Rico, USA. Respondent is Neil Okrent / Ivan Munguia (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pabloescobar.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2019; the Forum received payment on August 27, 2019.
On August 28, 2019, Network Solutions, LLC confirmed by e-mail to the Forum that the <pabloescobar.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 August 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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 firstname.lastname@example.org. Also, on August 30, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant offers a wide variety of goods in commerce worldwide.
Since 1986, Complainant and its predecessor in interest have continuously marketed a multitude of consumer goods under the PABLO ESCOBAR mark.
Throughout the same period, Complainant has expended hundreds of millions of dollars in support of its marketing efforts in behalf of the PABLO ESCOBAR mark, and has, as a consequence, developed substantial goodwill associated with the mark.
Complainant therefore has common law rights in the PABLO ESCOBAR mark dating from 1986.
Complainant also holds a registration for the PABLO ESCOBAR trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5, 283,974, registered September 12, 2017.
Respondent registered the domain name <pabloescobar.com> on November 26, 1999.
The domain name is substantively identical, and confusingly similar, to Complainant’s PABLO ESCOBAR mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise permitted Respondent to use the Pablo Escobar mark or to apply for or use any domain name incorporating that mark.
Respondent fails to make a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name.
Instead, Respondent fails to make any active use of the domain name.
The domain name resolves to a webpage that is simply a “holding page” which states that it is “under construction.”
Respondent is attempting to sell the domain name for three (3) million dollars ($3,000,000), a sum that far exceeds Respondent’s out-of-pocket costs of registering it.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s non-use of the domain name demonstrates bad faith.
Respondent’s registration of the domain name harms Complainant’s business, in that it prevents Complainant from reflecting its name in a corresponding domain name and email address.
Respondent both registered and uses the domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name has been registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the PABLO ESCOBAR mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
However, the record reflects that the <pabloescobar.com> domain name about which Complainant complains was registered by Respondent in 1999, approximately eighteen (18) years before Complainant registered its PABLO ESCOBAR mark in 2017, thus giving Respondent apparent time priority on the point of rights in the mark versus rights in the domain name. It is open to Complainant to overcome this discrepancy by showing that it also has rights in its mark under the common law which predate Respondent’s registration of the domain name. This is because common law rights in a mark are also sufficient to establish Complainant’s rights. See, for example, Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum March 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a UDRP complainant can establish common law rights in its mark). In the instant case, Complainant has demonstrated rights in the PABLO ESCOBAR mark under the common law from its long and continuous use in commerce and development of the mark in the marketplace dating from 1986, which Respondent does not deny.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <pabloescobar.com> domain name is substantively identical and confusingly similar to Complainant’s PABLO ESCOBAR trademark. The domain name contains the mark in its entirety, with only the deletion of the space between its terms and the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of identity or confusing similarity under the standards of the Policy. This is, in part, because domain name syntax does not permit the use of blank spaces. And see Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017):
When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain, then the Panel may find that the disputed domain name is identical to Complainant’s mark.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <pabloescobar.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <pabloescobar.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the PABLO ESCOBAR mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Neil Okrent / Ivan Munguia,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent fails to make a bona fide offering of goods or services by means of the domain name or a legitimate noncommercial or fair use of it, and indeed, that Respondent makes no discernible use of the domain name at all, but rather that the domain name resolves to a “holding page” which recites that it is “under construction.” In the circumstances here presented, we conclude that this inactive employment of the domain name for a period approaching twenty (20) years is neither a use in connection with 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) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Kohler Co. v xi long chen, FA 1737910 (Forum August 4, 2017):
Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use[,] of the domain. Respondent’s <kohler-corporation.com> [domain] resolves to an inactive webpage displaying the message “website coming soon!”
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
It is evident from the record that Respondent has maintained for nearly two decades a registration for the <pabloescobar.com> domain name, which we have found to be substantively identical and confusingly similar to Complainant’s PABLO ESCOBAR mark, without making any discernible effort to employ it in a legitimate use, whether commercial or otherwise. This stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum February 14, 2018):
Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.
It is also evident from the record that Respondent offers to sell the domain name for 3 million dollars ($3,000,000), and that this amount greatly exceeds Respondent’s out-of-pocket costs of obtaining and maintaining its registration. In these circumstances, we conclude that Respondent’s sole purpose in registering and deploying the domain name has been to deprive Complainant of the opportunity to use its mark in a corresponding domain name, and thereby to compel Complainant to purchase the domain name from it at an exorbitant price. This further demonstrates Respondent’s bad faith in registering and using it. See, for example, Arla Foods Amba v. Mohammad Alkurdi, D2017-0391 (WIPO April 14, 2017):
In the opinion of the Panel, this suggests that Respondent registered the disputed domain names primarily for the purpose of selling the domain name registrations to Complainants, the owners of the trademarks …, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names. This is evidence of registration in bad faith under Policy paragraph 4(b)(i). Moreover, offering a domain name for sale in such a manner is in itself evidence of use in bad faith of the domain name. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, finding that “[b]ecause respondent offered to sell the domain name to complainant ʻfor valuable consideration in excess of any out-of-pocket costs directly related to the domain name, respondent has ʻusedʼ the domain name in bad faith as defined in the Policy.”
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <pabloescobar.com> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 7, 2019
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