Ingenio San Nicolas, S.A. de C.V. v. francisco vargas
Claim Number: FA2009001915325
Complainant is Ingenio San Nicolas, S.A. de C.V. (“Complainant”), represented by Matthew J. Cavanagh of McDonald Hopkins LLC, Ohio, USA. Respondent is francisco vargas (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ingeniossannicolas.com> and <ingeniosanicolas.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2020; the Forum received payment on September 30, 2020.
On October 1, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ingeniossannicolas.com> and <ingeniosanicolas.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 October 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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@ingeniossannicolas.com, postmaster@ingeniosanicolas.com. Also on October 5, 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 October 30, 2020, 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a constituent part of the largest sugar refining company in the world.
Complainant holds a registration for the trade mark INGENIO SAN NICOLAS, which is on file with the Mexican Institute of Industrial Property (“MIIP”) as Registry No. 1,545,500, registered June 10, 2015.
Respondent registered the domain names <ingeniosanicolas.com> and <ingeniossannicolas.com> on February 16 and 19, 2020, respectively.
The domain names are confusingly similar to Complainant’s INGENIO SAN NICOLAS mark.
Respondent has not been commonly known by either of the domain names.
Complainant has not authorized Respondent to use its INGENIO SAN NICOLAS mark in the domain names.
Respondent does not use the domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead Respondent employs the domain names to profit by passing itself off as Complainant on their resolving websites in order to sell counterfeit or unauthorized products.
Respondent lacks both rights to and legitimate interests in the domain names.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent knew of Complainant’s rights in the INGENIO SAN NICOLAS mark when it registered the domain names.
Respondent also uses the domain names and their resolving websites to phish for the confidential information of unsuspecting Internet users.
The domain names are examples of typo-squatting.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. The domain names registered by Respondent are 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 names; and
3. The same domain names were registered and are 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:
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 INGENIO SAN NICOLAS trade mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the MIIP. See, for example, Solar Turbines Incorporated v. Thomas Boys / zaza plc / nally micheal / zaza plc, FA 1769295 (Forum March 5, 2018):
Complainant provides evidence of its trademark registration for … [its mark] … with MIIP and the Panel [therefore] finds that it has trademark rights in that expression [satisfying the requirements of Policy ¶ 4(a)(i)].
This is true without regard to whether Complainant’s rights in a mark arise from registration of that mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Mexico). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <ingeniossannicolas.com> and <ingeniosanicolas.com> domain names are confusingly similar to Complainant’s INGENIO SAN NICOLAS trade mark. Each of the domain names incorporates the seventeen-letter mark in its entirety, with only the deletion of the spaces between its terms and the omission or addition of a single letter, plus 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 confusing similarity under the standards of the Policy. See, for example, Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum November 15, 2006) (finding that a respondent’s <hacrs.com> domain name was confusingly similar to a UDRP complainant’s HACRES mark where the domain name omitted the letter “e” from the mark and added the generic top-level domain “.com”). See also Paperless Inc. v. ICS Inc, FA 1629515 (Forum August 17, 2015) (finding confusing similarity between the <paperlessspost.com> domain name and the trademark PAPERLESS POST where the domain name contained the entire mark and added an extraneous letter “s”).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in each of the domain names <ingeniossannicolas.com> and <ingeniosanicolas.com>, 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 either of the contested <ingeniossannicolas.com> and <ingeniosanicolas.com> domain names, and that Complainant has not authorized Respondent to use the INGENIO SAN NICOLAS trade mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “francisco vargas,” which does not resemble either of them. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in them 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).
We next observe that Complainant asserts, without objection from Respondent, that Respondent does not use either the <ingeniossannicolas.com> or the <ingeniosanicolas.com> domain names for any bona fide offering of goods or services or for any legitimate noncommercial or fair use, but that, instead, Respondent uses the domain names to profit by passing itself off as Complainant on their resolving websites in order to sell counterfeit or unauthorized products. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it 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, Wolverine World Wide, Inc. v. Fergus Knox, (finding no bona fide offering of goods or services and no legitimate noncommercial or fair use existed where a respondent used the website resolving from a disputed domain name to sell products branded with a UDRP complainant’s mark, but which were either counterfeits or legitimate products of that complainant being resold without its authorization).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the <ingeniossannicolas.com> and <ingeniosanicolas.com> domain names to market counterfeit or unauthorized goods, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain names. See, for example, Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015):
Complainant alleges that Respondent uses the … domain name for the purpose of disrupting Complainant’s business operations because it uses the resolving website to sell products that are either counterfeit versions of Complainant’s, or else, genuine versions being resold without authorization…. Past panels have found either use to constitute disruption under Policy ¶ 4(b)(iii), thereby showing bad faith use.
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the INGENIO SAN NICOLAS trade mark when it registered the disputed <ingeniossannicolas.com> and <ingeniosanicolas.com> domain names. This further illustrates Respondent’s bad faith in registering them. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [by a respondent of a UDRP complainant’s mark when it registered a confusingly similar domain name, and therefore bad faith in so registering it] through the name used for the domain and the use made of it.
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 domain names <ingeniossannicolas.com> and <ingeniosanicolas.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 9, 2020
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