American Sugar Refining, Inc. v. enrique cantellano
Claim Number: FA2008001908765
Complainant is American Sugar Refining, Inc. (“Complainant”), represented by Matthew J. Cavanagh of McDonald Hopkins LLC, Ohio, USA. Respondent is enrique cantellano (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dominoazucar.com> and <dominoazucarmexico.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 17, 2020; the Forum received payment on August 17, 2020.
On August 18, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <dominoazucar.com> and <dominoazucarmexico.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2020 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@dominoazucar.com, postmaster@dominoazucarmexico.com. Also on August 24, 2020, 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 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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. 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 any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <dominoazucar.com> and <dominoazucarmexico.com> domain names are confusingly similar to Complainant’s DOMINO mark.
2. Respondent does not have any rights or legitimate interests in the <dominoazucar.com> and <dominoazucarmexico.com> domain names.
3. Respondent registered and uses the <dominoazucar.com> and <dominoazucarmexico.com> domain names in bad faith.
B. Respondent did not file a Response.
Complainant manufactures and refines cane sugar throughout the world. Complainant holds registrations for the DOMINO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 73,099, registered Mar. 16, 1909) and the Mexican Institute of Industrial Proprty (“MIIP”) (Reg. 429,352, registered Jan. 15, 1993).
Respondent registered the <dominoazucar.com> domain name on June 25, 2020, and the <dominoazucarmexico.com> domain name on July 27, 2020, and uses them to sell Complainant’s products without authorization, or to sell counterfeit products.
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
The Panel finds that Complainant has rights in the DOMINO mark under Policy ¶ 4(a)(i) through its registrations with the USPTO and MIIP. See PineBridge Investments IP Holdings Limited v. uche victor, FA 1551301 (Forum May 6, 2014) (finding that Complainant’s registrations for the PINEBRIDGE mark with the USPTO, as well as the MIIP were sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <dominoazucar.com> and <dominoazucarmexico.com> domain names use Complainant’s DOMINO mark and add the descriptive words “azucar” (the Spanish word for sugar) and “mexico”, along with the “.com” gTLD to the mark. Adding geographic or descriptive terms that relate to a complainant’s industry, along with the “.com” gTLD, does not distinguish a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Accordingly, the Panel finds that Respondent’s <dominoazucar.com> and <dominoazucarmexico.com> domain names are confusingly similar to Complainant’s DOMINO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <dominoazucar.com> and <dominoazucarmexico.com> domain names, as Respondent is not commonly known by the disputed domain names, and Complainant never authorized or licensed Respondent to use the DOMINO mark in a domain name. The WHOIS of record identifies Respondent as “Enrique Cantellano.” Therefore, the Panel finds that find Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.).
Complainant contends that Respondent does not use the <dominoazucar.com> and <dominoazucarmexico.com> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Complainant claims that Respondent uses the disputed domain names to pass off as Complainant and redirect internet users to the disputed domain names’ resolving websites to sell either Complainant’s products or counterfeits of Complainant’s products. Using a disputed domain name to pass off as Complainant and divert internet users to the disputed domain name’s resolving website, and sell either complainant’s products or counterfeits of complainant’s products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute 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)). Complainant provides screenshots of the disputed domain names’ resolving websites, which feature products for sale that are either counterfeits or Complainant’s products being sold without authorization. Complainant also provides a screenshot of a quotation document from Respondent, which, along with the resolving websites, features Complainant’s mark featured prominently. The Panel finds that Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <dominoazucar.com> and <dominoazucarmexico.com> domain names in bad faith by disrupting Complainant’s business for commercial gain. Attempting to pass off as Complainant and divert internet users to the disputed domain names’ resolving website, where Respondent sells Complainant’s products without authorization, or counterfeit products, constitutes bad faith disruption for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). Accordingly, the Panel finds that Respondent uses the disputed domain names in bad faith by disrupting Complainant’s business for commercial gain under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also argues that Respondent registered the <dominoazucar.com> and <dominoazucarmexico.com> domain names in bad faith, as it had actual notice of Complainant’s rights in the DOMINO mark at the time of registration. The Panel agrees, noting Complainant’s use of the DOMINO mark for over 100 years, and Respondent’s use of the disputed domain names to sell unauthorized products of Complainant’s, and finds further bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dominoazucar.com> and <dominoazucarmexico.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 21, 2020
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