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Republic of Colombia, and its authorized designee, The Colombian Coffee Federation, Inc. vs. Future Disk Media and George Haverly [2001] GENDND 987 (19 May 2001)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

1.1 Complainant: REPUBLIC OF COLOMBIA, and its authorized designee, the COLOMBIAN COFFEE FEDERATION, INC., with a place of business at 140 East 57th Street, New York, New York 10022, USA.

1.2. Respondent: FUTURE DISK MEDIA and GEORGE HAVERLY, with a place of business at 617A Seaman Avenue, Baldwin, New York, 11510, USA.

2.1. The subject of the complaint is the domain name < colombiancoffeewholesale.com> .

2.2. The registering entity is Tucows, Inc.

3.1. A complaint was submitted to the WIPO Arbitration and Mediation Center (hereinafter called the Arbitration Center) on February 12, 2001 in accordance with the "Uniform Domain Name Dispute Resolution Policy" (hereinafter called the "Uniform Policy" as adopted by ICANN on 24 October 1999, and in accordance with the Rules for the Uniform Policy that ICANN likewise adopted.

- Following the corresponding Registrar verification, received from Tucows, Inc. by e-mail on February 23, 2001, the Respondent was notified of the complaint on February 27, 2001 and a term ending on March 18, 2001 was set for receiving his reply.

- On March 15, 2001, the Center received an e-mail from the Respondent in which he partially replied to the complaint and advised that his attorneys would subsequently submit a more detailed reply.

- On April 17, 2001, the Center received an e-mail from the Complainant requesting that the proceedings commence in view of the Respondent's failure to submit the subsequent response he had announced.

- By communication dated April 20, 2001, the entire case file for these proceedings were forwarded to Luis H. de Larramendi, sole panelist.

4.1. One of the Complainants, the Republic of Colombia, is owner of US certification mark registration No. 1.160.492 COLOMBIAN. The use and protection of this mark in the United States is handled through the National Federation of Coffee Growers of Colombia and specifically through its authorized designee, the Colombian Coffee Federation, Inc. who is also a complainant in this proceeding.

4.2. The Respondent is Future Disk Media of US nationality.

4.3. In the opinion of the panel, the following facts must also be taken into account for purposes of these proceedings:

- <colombiancoffeewholesale.com> , the domain name that is the subject of this proceeding, was registered on October 20, 2000.

- No evidence has been submitted to the effect that the Respondent used the domain name in conflict or made preparations showing his intention to use it prior to the date on which the dispute commenced.

- On December 29, 2000, the Complainants sent a letter to the Respondent informing him of the existence of Certification Mark No. 1.160.492 COLOMBIAN and demanding the transfer of the domain name.

- Respondent placed content on the website identified by the domain name in conflict on the same date as he received the letter from the Complainants, i.e. on December 29, 2000.

The Complainants contend:

- That the Republic of Colombia (hereinafter called the "Republic") is the proprietor of Certification Mark Registration No. 1.160.492 COLOMBIAN.

- That on behalf of the Republic, the National Federation of Coffee Growers of Colombia (hereinafter called the "Federation") and its designee The Colombian Coffee Federation, Inc. (hereinafter called "CCF") enforce and protect the rights in the certification mark which, though registered with the US Patent and Trademark Office on 7 July 1981, has been used in the United States since September 1927.

- That the certification mark is the instrument that the Republic uses to certify that all coffee bearing the certifications mark was grown in Colombia, that such coffee was subjected to standard inspection authorized by the Republic; and that it was approved for export to the United States of America as having passed the quality standards set by the Republic.

- That because of the substantial amounts the Federation has spent on advertising and promoting the certification mark, it has become symbolic of goodwill and recognition by consumers who identify coffee bearing the mark as high quality, 100% Colombian coffee.

- That the certification mark and the domain name in conflict resemble each other because the latter includes the former in its entirety.

- That, although the Respondent currently uses the domain name to identify a website through which Colombian Coffee is offered, the website was launched only a few hours after the Respondent received a letter from the Republic's representatives informing him of the Republic's intention to submit the subject complaint.

- That, before launching the website, the Respondent was not commonly known by the domain name as an individual, a business or other organization.

- That, on December 29, 2000, the Republic sent a letter to the Respondent by e-mail and on paper (via courier). In that letter, Respondent was informed of the existence of the certification mark and of the Republic's belief that the domain name had been registered in bad faith.

- That the Respondent replied by e-mail approximately one hour later and specifically stated that he found no reason for relinquishing the domain name and that Colombian Coffee was a generic expression.

- That the incorporation of the certification mark into a domain name that identifies a website purporting to sell and distribute coffee constitutes use of the certification mark other than as a simple indication of the geographic origin of the product and it constitutes an attempt to misappropriate the prestige the public associates with the certification mark and that, therefore, the domain name was registered and used in bad faith.

As a result, the Complainants petition that the domain name registration be transferred to the Federation.

Although the Respondent met the deadline of March 18, 2001, set by the Center in its notification of February 27, 2001, he simply sent an e-mail to the Center making four statements and announcing that a formal reply to the complaint would be submitted subsequently by his representative.

The fact is that, in the opinion of the Panel, that e-mail cannot be considered to be a reply to the complaint. It meets none of the formal requirements of the Rules and neither has the Center received any further arguments or documentation as the Respondent himself announced.

The four statements made by the Respondent are:

- That Colombian Coffee Wholesale, Inc. is the name of the Respondent in the United States.

- That the Respondent sells and distributes only 100% Colombian coffee.

- That his website will expressly state that it is not endorsed by the Federation unless his application for membership is accepted.

- That "Colombian coffee" or "Colombian" are terms used by thousand of businesses of different sizes to promote their coffee products.

Paragraph 15 a) of the Rules instructs the Panel to render its decision on the basis of:

- the statements and documents submitted by the parties;

- the provisions of the "Uniform Policy" and of the "Rules" themselves; and

- any rules and principles of law that it deems applicable.

6.2. Admissibility of the Complaint pursuant Paragraph 4 a) of the Uniform Policy

Paragraph 4 a) states the following conditions:

- the domain name registered by the Respondent must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

- the Respondent must have no rights or legitimate interest in respect of the domain name; and

- the domain name must have been registered and used in bad faith.

The panel believes that certain prior considerations must necessarily be taken into account:

- The mark in which the Complainant has evidenced registered rights is "COLOMBIAN"

- This term is included in its entirety in the domain name <colombiancoffeewholesale.com>.

- The elements of the domain name that prevent it from being totally identical to the mark are "coffee", "wholesale" and ".com".

The Panel concludes that the mark and domain name are similar, considering that the mark is COLOMBIAN and that that term is the prominent and truly distinctive element of the domain name. The ending of the domain name, WHOLESALE, simply refers to how the product being offered is sold; COFFEE is descriptive; and ".com" refers to the gTLD and, pursuant to numerous decisions rendered by the Center, it must not be taken into account for purposes of comparison.

The Panel therefore concludes that the Complainant has proven the presence of the first element required by paragraph 4 a) of the Uniform Policy.

In analyzing this requirement, the Complainant simply stated that the Respondent launched its website after receiving Complainant's letter informing that it intended to commence this proceeding; that the Respondent was not commonly known by the domain name in conflict; and that the Respondent is not making legitimate non-commercial use of the domain name.

Although there is no question that the Uniform Policy requires that the Complainant prove the presence of the three premises set out under paragraph 4 a), the Panel believes that the non-existence of a right cannot be proven; it can only be affirmed. The effective existence of that possible right must be proven by the one who claims to own it, namely the Respondent in this case.

None of the statements contained in the e-mail that the Respondent sent to the Center on March 15, 2001 refer to circumstances that would allow the Panel to conclude that the Respondent had rights or legitimate interests prior to the commencement of the dispute. In this respect, the Panel wishes to point out the following:

- To merely state that "Colombian Coffee Wholesale, Inc." is the corporate name identifying the Respondent in the United States is neither acceptable nor sufficient as Respondent provides no documentary evidence of either the existence of the company or the date on which it was incorporated, this being information that might have demonstrated that the Respondent could have been known earlier by that name.

- Neither does the statement that "Colombian coffee" or "Colombian" are expressions used by thousands of businessmen to promote their coffee products constitute an acceptable argument or proof of any right.

This statement is directly related to the content of the Respondent's reply dated December 29, 2000, to the earlier letter from the Complainant, in which Respondent claimed that "Colombian coffee" was a generic term at the present time.

The generic nature of the term "Colombian coffee" alleged by the Respondent cannot be accepted as a circumstance that provides him with rights or legitimate interests. There are two reasons for this:

- Because a trademark registration granted in the United States exists and its existence has been evidenced through documents. Therefore, to enter into a discussion of the generic nature of the term would be tantamount to challenging the suitability of the registration, something that is neither the intention nor the function of this Panel.

- Because that alleged generic nature would imply that anyone would be entitled to use the term protected by the Complainant's certification mark when the fact that the term was registered implies precisely a limitation of its use to those who truly comply with the conditions for the certification of the product they market.

- The Panel also wishes to add that the non-existence of rights or legitimate interests held by the Respondent in the domain name is equally inferred from the absence of the formal reply to the complaint that the Respondent himself announced would be submitted in his e-mail of March 15, 2001, addressed to the Center. Had the Respondent been able to evidence such rights or legitimate interests, he would logically have done so.

This circumstance can be interpreted only as either the non-existence of rights or legitimate interests or as a lack of interest in evidencing them in the event that they exist, something the Panel finds to be equivalent.

The panel therefore concludes that the Complainant has also proven the presence of the second premise of paragraph 4 a) of the Uniform Policy.

In analyzing this last premise, the Panel believes several aspects must be considered:

In view of the weak documentary support of the complaint which does not include any proof of the international recognition of the certification mark that the Complainant claims and even neglects to mention the existence of the <colombiancoffeefederation.com> website as a means of verifying this point, the Panel itself consulted the website, making use of the authority accorded to it by article 10 a) of the Uniform Policy.

That website shows the evolution of all the signs used by the Complainant, including "Colombian coffee" and consequently "Colombian", and their impact on US consumers.

This information is more than sufficient evidence that, at least until 1995, the term Colombian Coffee (and, therefore, Colombian) was used by the Complainants as a term to certify the characteristics that the US certification mark registration guarantees in 1981, as indicated above.

In the Panel's opinion, the Respondent who does business in the coffee sector, cannot deny knowledge of either the high degree of renown of Colombian coffee as a product or of the terms "Café de Colombia" or "Colombian coffee" as signs certifying the origin of the product.

The Panel believes this circumstance is sufficient to determine that registration of the domain name in conflict cannot have been obtained in good faith pursuant to the criterion followed by other decisions rendered by the Center such as WIPO D2000-0018.

Additional circumstances must also be considered such as the fact that the Respondent is not of Colombian origin nor does he provide evidence of any connection to Colombia that might give him some legitimate right. All these circumstances lead to the conclusion that the registration of the domain name in conflict constitutes abusive intent and, therefore, bad faith.

By applying certain criteria contained in other decisions of the Center (such as D2000-0239), it could be concluded that the domain name was used in bad faith since "when someone registers a domain name in bad faith and with no legitimate interests, it is difficult to imagine that he could use the registered domain name in good faith". However, the Panel is of the understanding that, in this case, the domain name has been the subject of passive possession by the Respondent. This is sufficient cause to consider that the domain name has not only been registered in bad faith but also used in bad faith in accordance with decisions such as WIPO D2000-1402, WIPO D2000-0464 or WIPO D2001-0151.

This conclusion has been reached here by jointly considering the following proven facts:

- In the second paragraph of its letter of December 29, 2000, to the Respondent, the Complainant states that "Although there is no operational website at the Domain Name as of this writing..."

- Had the Respondent given content to the website before or even on that same date, but before receiving the Complainant's letter, he would have said so in his e-mail reply to the Complainant, also dated December 29, 2000.

- Exhibit F of the complaint includes printed copies of the content of the website in question obtained on January 2, 2001. All of those copies state "Last modified: December 29, 2000".

The Panel must assess the status of this website before the dispute was known (in other words before the date the dispute commenced, i.e. the date of the first letter from the Complainant to the Respondent) and there is no doubt that, until December 29, 2000, the website identified by the domain name in conflict had no content, something that constitutes passive possession and, therefore, use in bad faith.

Furthermore, the fact that use of the domain name began only after receiving the Complainant's warning letter can only be considered "use in bad faith" given that such conduct can only be intended to offset the effects of the dispute proceeding that the Complainant itself announced in that letter.

The Panel concludes that the Complainant has also proven the presence of this element, as required by paragraph 4 a) of the Uniform Policy.

For all the foregoing reasons, the Administrative Panel decides that the complainant has proven the presence of the three conditions required in Paragraphs 4 a) (i), (ii) and (iii). Consequently, the Administrative Panel requires that the <colombiancoffeewholesale.com> domain name be transferred to the Complainants and specifically to Colombian Coffee Federation, Inc., as the Complainants request in their complaint.

Luis H. de Larramendi
Sole Panelist

Dated: May 19, 2001