Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Navarro Discount Pharmacies No. 1, Inc., Miami, FL, USA ("Complainant") represented by David A. Gast, of Malloy & Malloy, PA. The Respondent is M. Garcia, Gran Canaria ("Respondent").

The domain name at issue is "NAVARRO.com", registered with Register.com, Inc.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 31, 2001; the Forum received a hard copy of the Complaint on January 31, 2001.

On February 5, 2001, Register.com, Inc. confirmed by e-mail to the Forum that the domain name "NAVARRO.com" is registered with Register.com, Inc. and that the Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 2001 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@NAVARRO.com by e-mail.

A timely response was received and determined to be complete on February 26, 2001.

On March 2, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant states that the United States Patent and Trademark Office has issued to it a service mark for the word "NAVARRO" under Reg. No. 2,098,890 dated September 23, 1997, and for "NAVARRO SI LO TIENE TODO" (translated – NAVARRO HAS IT ALL) Reg. No. 2,105,474 dated October 14, 1997. Complainant is the owner of two trademarks for the word "NAVARRO", Reg. No. 2,102,864 dated October 7, 1997, and Reg. No. 2,045,934 dated March 18, 1997.

Complainant is a retail and wholesale store offering products for sale in eleven full service drug stores canvassing South Florida. Complainant also operates a full service e-commerce bilingual web site offering more than 10,000 items for direct purchase. Complainant is ranked in the top 50 drug store chains in the United States, and is ranked first in the number of prescriptions sold per store and in average annual sales per store for retail pharmacies. Complainant contends that through investment of significant amounts of money in promotion of its operation it has generated substantial sales and good will under the NAVARRO mark.

In support of its contention that the domain name should be transferred to it, Complainant alleges as follows:

B. Respondent

Respondent contends that the name Navarro in Spain, his country of residence, cannot be registered as a trademark because it is a very common name, as common as Smith, Jackson, or Brown are in the United States. Respondent sets forth that Spain, with a population in excess of 4,000,000, has more than 400,000 people who carry the name Navarro. In addition, there are more than 6,500 businesses in Spain operating under the name Navarro. Respondent claims that in the locality where he lives there are more than 3,000 people whose family name is Navarro, some of them friends, classmates, and neighbors. Respondent contends that until the Complaint in this proceeding was served on him, he had never heard of Complainant. That at the time of the service of the Complaint he had a project for this web page. Respondent states that it has been his intention to create a web page to offer a personal web and email to people with the family name of Navarro. Respondent denies that he has obtained ownership of the domain name at issue with the intention of selling, renting, or transferring it to anyone.

Complainant holds three Certificates of registration from the United States Patent and Trademark Office for the service/trademark "NAVARRO" which are identical to the domain name "NAVARRO.com". Complainant holds a Certificate of Registration for the service mark "NAVARRO SI LO TIENE TODO" which is confusingly similar to the domain name in dispute. All four Certificates were issued in the year 1997.

Respondent registered the domain name "NAVARRO.com" on August 9, 2000 under the name M. Garcia. Subsequently the registrants identity was amended to Manuel Garcia Quintas. In his Answer to this Arbitration proceeding Respondent did not address the issue of change of identity. It is hereby determined that M. Garcia and Manuel Garcia Quintas are one and the same person.

Respondent has no rights or legitimate interests in the domain name "Navarro.com".

Respondent registered and has been using the domain name in bad faith.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 owns the registered mark NAVARRO, which it has used in connection with various cleaning preparations, facial creams, degreasing products, hair products, nail polish, skin soaps, and skin lotions. Complainant contends Respondent’s domain name, NAVARRO.com, is identical to its well-established mark. See Interstellar Starship Services Ltd. V. EPIX, Inc., 983 F. Supp. 1331, 1335 (D.Or. 1997) (epix.com "is the same mark" as EPIX); see also Koninklijke Philios Electronics NV v. Ramazan Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to Complainant’s PHILIPS mark).

Further, Respondent’s domain name is so confusingly similar a reasonable Internet user would assume that the domain name is somehow affiliated with Complainant’s well-established mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent when in fact no such relationship would exist).

Respondent has no rights or legitimate interests in the domain name in question because Respondent is not commonly known by the domain name, nor has Respondent used the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain. See Adamovske Strojirny v. Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where the Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in Question): see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000 (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Complainant asserts that Respondent registered the domain name at issue to intentionally attract, for commercial gain, Internet users to its web site, or other online location, by creating a likelihood of confusion with Complainant’s well-established mark as to the source, sponsorship, affiliation and endorsement of Respondent’s web site. See Luck’s Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a web site that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s marks); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

Moreover, although Respondent has not presented its domain name for sale, there is no plausible explanation why Respondent would choose to register the domain name at issue other than to offer it for sale. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) ("[T]he policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith"); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) ("[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶ 4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith").

Finally, Respondent has made no use of the domain name at issue since its registration. See Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also DCI S.A. v. Link Commercial Corp. D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirements of paragraph 4(a)(iii) of the Policy).

Complainant having established all three elements required under ICANN Policy, the Panel concludes that Complainant is entitled to the relief it seeks.

IT IS HEREBY ORDERED, that the domain name "NAVARRO.com" be transferred from Respondent to Complainant.