Grupo Santo Domingo a/k/a Santo Domingo Group and Alejandro Santo Domingo-Davila v. Ricco Black
Claim Number: FA1407001568250
Complainants are Grupo Santo Domingo a/k/a Santo Domingo Group and Alejandro Santo Domingo-Davila (collectively “Complainant”), represented by Patrick T. Casey of Buchanan Ingersoll & Rooney PC, Pennsylvania, USA. Respondent is Ricco Black (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <santodomingogroup.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 3, 2014; the National Arbitration Forum received payment on July 3, 2014.
On July 4, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <santodomingogroup.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. 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 July 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2014 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@santodomingogroup.com. Also on July 9, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant has rights in the GRUPO SANTO DOMINGO mark, used in connection with real estate and financial services. Complainant owns trademark registrations for the GRUPO SANTO DOMINGO mark with Columbia’s Superintendencia y Comercio (e.g., Reg. No. 440,407 registered February 7, 2012).
b) Respondent’s <santodomingogroup.com> domain name is confusingly similar to Complainant’s GRUPO SANTO DOMINGO mark.
c) Respondent does not have rights or legitimate interests in the <santodomingogroup.com> domain name.
d) Respondent is not commonly known by the <santodomingogroup.com> domain name, and Complainant has not authorized Respondent to use its GRUPO SANTA DOMINGO mark in any way.
e) Respondent is using the <santodomingogroup.com> domain name to conduct an email fraud scheme.
f) Respondent registered and is using the <santodomingogroup.com> domain name in bad faith.
g) Respondent is using the <santodomingogroup.com> domain name to conduct an e-mail fraud scheme. Respondent tried to lure the founder of a start-up company in the United States to Buenos Aires, Argentina under the guise of being willing to provide venture capital to the start-up company. Respondent attempted to execute this scheme by posing as both a business associate of Mr. Santo Domingo and as Mr. Santo Domingo in emails connected to the disputed domain name.
h) Respondent’s attempt to impersonate Mr. Santa Domingo proves that Respondent had knowledge of Complainant’s GRUPO SANTA DOMINGO mark prior to registering the disputed domain name.
i) Respondent registered the <santodomingogroup.com> domain name on November 24, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GRUPO SANTA DOMINGO mark. Respondent’s domain name is confusingly similar to Complainant’s GRUPO SANTA DOMINGO mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <santodomingogroup.com> domain name, and that Respondent registered and uses the domain name 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:
(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(e), 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 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.”).
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Grupo Santo Domingo and Alejandro Santo Domingo-Davila. Mr. Santo Domingo is the founder of Grupo Santo Domingo. Mr. Santo Domingo explains that he brought this proceeding because Respondent has impersonated him through the use of an email address connected to the <santodomingogroup.com> domain name. Therefore, Complainants argue that Mr. Santo Domingo has a right to be a party to this action.
The Forum’s Supplemental Rule 1(e) has been interpreted to allow multiple parties to proceed as one party where they can show a sufficient link to each other. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006). The Panel finds such a sufficient link here and will allow Grupo Santo Domingo and Mr. Santo Domingo to proceed as multiple complaining parties.
Complainant contends it has rights in the GRUPO SANTO DOMINGO mark, used in connection with real estate and financial services. Complainant owns trademark registrations for the GRUPO SANTO DOMINGO mark with Colombia’s Superintendencia y Comercio (e.g., Reg. No. 440407 registered February 7, 2012). Although Respondent resides or operates in a different country than that in which Complainant holds its trademark registration, a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the GRUPO SANTO DOMINGO mark under Policy ¶ 4(a)(i) because Complainant holds valid registrations for the mark with the Superintendencia y Comercio in Colombia.
Complainant alleges that Respondent’s <santodomingogroup.com> domain name is confusingly similar to Complainant’s GRUPO SANTO DOMINGO mark. The disputed domain name includes Complainant’s mark in its entirety; however, the term “grupo” has been changed to English translation “group,” and it has been moved in front of the “santo domingo” portion of the trademark. The domain name adds the generic top-level domain (“gTLD”) “.com.” Using a foreign equivalent of all or a portion of a complainant’s mark does not negate a finding of confusing similarity. See Register.com, Inc. v. Int’l Languages Inc., FA 558106 (Nat. Arb. Forum Nov. 9, 2005) (“Since Respondent chose <registro.com> as a Spanish match for Complainant’s REGISTER and REGISTER.COM marks, it seems appropriate to apply the doctrine of foreign equivalents in this case, as permitted under the Rules which allow a Panel to apply any law or precedent it finds applicable to a particular case.”). Further, adding a gTLD is irrelevant for the purposes of the confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that <santodomingogroup.com> domain name is confusingly similar to Complainant’s GRUPO SANTO DOMINGO mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent does not have rights or legitimate interests in the <santodomingogroup.com> domain name. Complainant states that Respondent is not commonly known by the <santodomingogroup.com> domain name, and Complainant has not authorized Respondent to use its GRUPO SANTA DOMINGO mark in any way. It is proper to consider the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence in the record as whole in determining whether the respondent is commonly known by the disputed domain name. 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). Therefore, because Respondent was not authorized by Complainant to use the GRUPO SANTA DOMINGO mark, and neither the WHOIS information nor any other evidence in the record indicates otherwise, the Panel finds that Respondent is not commonly known by the <santodomingogroup.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is using the <santodomingogroup.com> domain name to conduct an email fraud scheme, impersonating Alejando Santo Domingo-Davila, the founder of Complainant and posing as a business associate of Mr. Santo Domingo through an email address connected to the disputed domain name. In PineBridge Investments IP Holdings Limited v. uche victor, FA 1551301 (Nat. Arb. Forum May 6, 2014), the respondent was using an email address connected to the <ceo-pinebridge.com> domain name to persuade consumers to engage in financial and investment activities. The respondent used the email address to obtain information and documents from consumers, including passports and bank account information. There, the panel determined that the respondent was not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Similarly, in this case Respondent’s only use of the disputed domain name appears to be an effort to commit fraud. Therefore, the Panel finds that Respondent’s fraudulent conduct does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and is using the <santodomingogroup.com> domain name in bad faith. Complainant claims Respondent is using the <santodomingogroup.com> domain name to conduct an email fraud scheme. Respondent tried to lure the founder of a start-up company in the United States to Buenos Aires, Argentina under the guise of being willing to provide venture capital to the start-up company. Respondent attempted to execute this scheme by posing as both a business associate of Mr. Santo Domingo and as Mr. Santo Domingo himself in emails connected to the disputed domain name. Such conduct has been found to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See The PNC Financial Servs. Group, Inc. v. Daniel Lee / Danie Lee, FA 1533525 (“Impersonating a complainant constitutes bad faith use and registration of a domain name under Policy ¶4(b)(iv).”); see also See PineBridge Investments IP Holdings Limited v. uche victor, FA 1551301 (Nat. Arb. Forum May 6, 2014) (“[r]espondent is trying to confuse Internet users into believing that Respondent is in fact the CEO of [c]omplainant’s business, when it is not. The [p]anel finds that using a disputed domain name to attract Internet users to a website by confusing them as to the [c]omplainant’s affiliation with [r]espondent’s disputed domain name indicates bad faith use and registration under Policy ¶ 4(b)(iv)”). Therefore, the Panel finds that Respondent registered and is using the <santodomingogroup.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is conducting an email fraud scheme in which Respondent impersonates Complainant.
Complainant argues that Respondent’s attempt to impersonate Mr. Santa Domingo proves that Respondent had knowledge of Complainant’s GRUPO SANTA DOMINGO mark prior to registering the disputed domain name. The Panel agrees that the evidence indicates that Respondent was aware of Complainant’s mark at the time Respondent registered the disputed domain name; thus the Panel concludes that Respondent had actual notice of Complainant's mark and therefore registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
The Panel finds 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 <santodomingogroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 7, 2014
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