Compania Licorera de Nicaragua, S.A. v. Miss Toronto c/o Terry Turl
Claim Number: FA0912001297556
Complainant is Compania Licorera de Nicaragua, S.A. (“Complainant”), represented by John
H. Friedhoff of Fowler White Burnett, P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <flordecanarum.com>, registered with Tucows Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 4, 2009; the National Arbitration Forum received a hard copy of the Complaint December 7, 2009.
On December 7, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <flordecanarum.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. verified that Respondent is bound by the Tucows Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 2010, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@flordecanarum.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Preliminary Issue: Other Correspondence
Respondent
provided the Forum with communication that the Forum has labeled “Other
Correspondence” because this correspondence fails as a Response because it was
sent directly to the Forum in e-mail format only. The Panel does not need to request additional
information from Respondent; however, because after reading and considering the
“Other Correspondence,” the Panel finds that sufficient information already is
before the Panel to render a fair decision on the merits.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <flordecanarum.com> domain name is confusingly similar to Complainant’s FLOR DE CANA mark.
2. Respondent has no rights to or legitimate interests in the <flordecanarum.com> domain name.
3. Respondent registered and used the <flordecanarum.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding. Respondent did send
“Other Correspondence,” as referenced above.
C. Thereafter,
Complainant filed an Additional Submission, which was determined to be
timely and in compliance with the Forum’s Supplemental
Rule 7. The Arbitrator, similarly, read
and considered Complainant’s Additional Submission; but the allegations therein
did not change the outcome on the merits.
Complainant, Compania Licorera de Nicarague, S.A., is a producer and distributor of alcohol products including its world-popular rum. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the FLOR DE CANA mark (Reg. No. 3,316,173 issued October 23, 2007).
Respondent registered the <flordecanarum.com> domain name April 22, 2009. Respondent’s disputed domain name resolves to an inactive website. In addition, Respondent offered to sell the disputed domain name to Complainant for $10,000.
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."
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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 obtained a trademark registration for the FLOR
DE CANA mark with the USPTO on October 23, 2007 (Reg. No. 3,316,173). The Panel finds that Complainant established
rights in the FLOR DE CANA mark for purposes of Policy ¶ 4(a)(i)
through its trademark registration with the USPTO. See
Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)); see also KCTS
Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001)
(holding that it does not matter for the purpose of paragraph 4(a)(i) of the
Policy whether the complainant’s mark is registered in a country other than
that of the respondent’s place of business).
Complainant contends that Respondent’s <flordecanarum.com> domain name is confusingly similar to Complainant’s FLOR DE CANA mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains Complainant’s mark in its entirety, adds the descriptive term “rum,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the term “rum,” when added to Complainant’s FLOR DE CANA mark in the disputed domain name, creates a confusing similarity between Complainant’s mark and the disputed domain name because the term “rum” has an obvious relationship to Complainant’s offering of alcohol and more specifically rum products. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). In addition, the Panel finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from an established mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also 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).
Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks all rights to and legitimate interests in the disputed domain name. Complainant is required to make a prima facie case in support of its allegations. Once it does so, the burden shifts to Respondent to prove that its rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case as to its rights and legitimate interest in the mark contained in its entirety within the disputed domain name. Respondent does not challenge Complainant’s showing of rights in either a properly and timely filed Response or Respondent’s “Other Correspondence,” which does not raise an issue about the burden under this section. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant also contends that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). The relevant WHOIS information identifies the registrant of the disputed domain name as “Miss Toronto c/o Terry Turl” and there is no evidence in the record to suggest that Respondent is otherwise commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent has failed to make an active use of the disputed domain name indicated by the blank webpage displayed on the resolving website. Respondent has made no showing to the contrary. Therefore, the Panel finds that Respondent is not using the disputed domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not using it for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
In addition, Complainant presents evidence that Respondent offered to sell the disputed domain name for $10,000., an amount in excess of the out-of-pocket costs needed in order to register the disputed domain name. The Panel finds that Respondent’s offer to sell the disputed domain name for a price in excess of Respondent’s out-of-pocket costs is evidence that supports findings that Respondent lacks rights and legitimate interests in the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Complainant satisfied the elements in ICANN Policy ¶ 4(a)(ii).
Respondent offered to sell the disputed domain name to Complainant for $10,000., an amount in excess of Respondent’s out-of-pocket costs to register the disputed domain name. The Panel finds that this offer to sell is evidence that supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent failed to put forth any evidence of its intent to use the disputed domain name. The disputed domain name remains constructively unused and displays a blank page on the resolving website. Accordingly, the Panel finds this passive holding of the disputed domain name to support findings that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Complainant satisfied the elements of ICANN 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 <flordecanarum.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 28, 2010
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