Ciciban Canada Inc. v. Carlos Blanco Vazquez / Itnet Consulting Business SL
Claim Number: FA1412001594216
Complainant is Ciciban Canada Inc. (“Complainant”), represented by Richard Marsen of Wells IP Law, LLC, Utah, USA. Respondent is Carlos Blanco Vazquez / Itnet Consulting Business SL (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ciciban.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 known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2014; the National Arbitration Forum received payment on December 9, 2014.
On December 10, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ciciban.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 December 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@ciciban.com. Also on December 10, 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 January 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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
Complainant uses the CICIBAN mark to identify its brand of children’s footwear. Respondent has registered the CICIBAN term with several trademark agencies including the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,443,206, registered Dec. 3, 2013, filed Apr. 10, 2013), the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 852,187, registered May 31, 2013, filed Nov. 1, 2011), as well as the Slovenian Intellectual Property Office (“SIPO”) (Reg. No. 200,570,346, registered Aug. 23, 2005, filed Mar. 16, 2005). The <ciciban.com> domain name is identical to the CICIBAN mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized to use the mark. Respondent operates a “domaining” business where Respondent registers domain names containing the marks of other brand names and seeks to make financial gain from the sale or leasing of these domain names. The disputed domain name is listed for sale in excess of out-of-pocket costs.
Respondent’s bad faith registration and use is demonstrates by Respondent’s offer to sell the disputed domain name in the amount of €5,900, which is well in excess of the out-of-pocket costs related to the domain name registration.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the formal disputed domain name was registered July 12, 2007.
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.”).
Complainant uses the CICIBAN mark to identify its brand of children’s footwear. The Panel notes that the CICIBAN term is registered with several trademark authorities including the USPTO (Reg. No. 4,443,206, registered Dec. 3, 2013, filed Apr. 10, 2013), the CIPO (Reg. No. TMA 852,187, registered May 31, 2013, filed Nov. 1, 2011), as well as the SIPO (Reg. No. 200,570,346, registered Aug. 23, 2005, filed Mar. 16, 2005). The Panel notes that the SIPO trademark registration cited by Complainant , which predates Respondent’s domain registration, is owned by AFIT, who has acknowledged (in an attachment to a response to an interlocutory order) that Complainant may bring a UDRP complaint based on the SIPO registration and a WIPO registration, also for CICIBAN in AFIT’s name. Prior panels have found that a trademark registrant may confer rights to another party through a license or by assignment. See Good Chevrolet, Inc. v. Shingo Kurokawa, FA 1586521 (Nat. Arb. Forum Nov. 28, 2014) (“The panel agrees that complainant has established rights in the CHEVY mark as a licensee of the federally registered mark”); Remithome Corp. v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME by virtue of an assignment). In this proceeding, the Panel determines that Complainant’s demonstrated authorization to bring this UDRP action based on these registrations serves to establish Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).
The <ciciban.com> domain name is identical to the CICIBAN mark pursuant to Policy ¶ 4(a)(i). See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant urges that Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized to use the mark. The Panel notes that the WHOIS information lists “Carlos Blanco Vazquez / Itnet Consulting Business SL” as registrant, which bears no semblance to the disputed domain name. In light of the available evidence, the Panel finds no basis to hold Respondent to be commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent operates a “domaining” business where Respondent registers domain names containing the marks of other brand names and seeks to make financial gain from the sale or leasing of these domain names. Complainant adds that this particular domain name is listed for sale in the amount of €5,900. The Panel notes that the disputed domain name resolves to a page operated by “TopDomainer,” and allows visitors to contact Respondent regarding purchase or lease terms. The evidence submitted by Complainant indicated that Respondent lacks rights or a legitimate interest in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See 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); Groupe Auchan v. Slawomir Cynkar, D2009-0314 (WIPO May 11, 2009) (noting that “Respondent’s offer to sell or rent the domain names does not give rise to any right or legitimate interest”).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
As previously discussed, evidence proffered by Complainant supports a finding that Respondent registered the disputed domain name primarily for the purpose of selling or renting the name to Complainant, or a competitor of Complainant, for consideration beyond out-of-pocket costs. The Panel therefore finds evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered that domain for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Thus, Complainant has also 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 <ciciban.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: February 4, 2015
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