DECISION

Compania Licorera de Centroamerica, S.A. v. Lucrecia Rojas

Claim Number: FA0203000106121

PARTIES

Complainant is Compania Licorera de Centroamerica, S.A., PANAMA CITY, PANAMA (“Complainant”) represented by Mariana Blanco, of Fowler, White, Burnett PA.  Respondent is Lucrecia Rojas, Alajuela, COSTA RICA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <flordecaña.com> (BQ--ABTGY33SMRSWGYPRME.COM), registered with Verisign - Network Solutions, Inc.

PANEL

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 27, 2002; the Forum received a hard copy of the Complaint on March 29, 2002.

On April 5, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <flordecaña.com> is registered with Verisign - Network Solutions, Inc. and that Respondent is the current registrant of the name.  Verisign - Network Solutions, Inc. has verified that Respondent is bound by the Verisign - Network Solutions, 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 April 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 29, 2002 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@flordecaña.com and postmaster@BQ--ABTGY33SMRSWGYPRME.COM by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s domain name is identical to Complainant’s well-established mark.

2. Respondent has no rights or legitimate interests in the <flordecaña.com> domain name.

3. Respondent has registered a domain name that is identical to Complainant’s mark and Respondent has used the disputed domain name to create confusion with the general public which will acquire a negative impression of Complainant’s business by accessing a non-working website and thus tarnish Complainant’s well-known mark.  Therefore, Respondent has registered and used the disputed domain name in bad faith.

B. Respondent

No Response was submitted.

FINDINGS

Complainant registered FLOR DE CANA with the United States Patent and Trademark Office on November 1, 1994, Registration Number 1,861,443.  Complainant uses the mark in connection with a well-known rum distillery in Nicaragua with annual sales in excess of five million liters per year.  Complainant and its parent company also have the mark FLOR DE CAÑA registered in numerous other countries worldwide.  Complainant uses the domain name <flordecana.com> in connection with promoting its goods on the Internet.

Respondent registered <flordecaña.com> (BQ--ABTGY33SMRSWGYPRME.COM) on May 12, 2001.  There is no evidence presented that Respondent has actually used the website associated with the disputed domain name, and currently the website is not in operation.

DISCUSSION

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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the 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.

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; and

(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.

Identical and/or Confusingly Similar

Complainant has established its rights to the FLOR DE CANA mark through registration with the USPTO and subsequent continuous use.  The <flordecaña.com> domain name is confusingly similar to Complainant’s mark.

The disputed domain name is nearly identical to Complainant’s mark because spaces in a domain name does not create a distinction capable of overcoming the identical nature of the domain name and mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES trademark).

 

The only significant difference between the disputed domain name and the mark is that the disputed domain name replaces “n” with an “ñ.”  It has been held that where a domain name incorporates Complainant’s mark and merely adds an international language symbol in the domain name, the domain name and the mark are considered confusingly similar.  See Fortuneo v. Guinebert, D2001-0781 (WIPO Sept. 5, 2001) (finding the FORTUNEO mark and the domain name <fortunéo.com> confusingly similar); see also Kværner ASA v. Tele og Media Consult as, D2001-0809 (WIPO Sept. 12, 2001) (finding the KVAERNER mark and the domain name <kværner.net> confusingly similar).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has not filed a Response.  Therefore, the Panel presumes that Respondent has no rights or legitimate interests in <flordecaña.com>.  See Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that Respondent's failure to respond to the Panel's additional requests warranted a finding for Complainant).  Because a Response was not filed, the Panel presumes that all allegations in the Complaint are true.  See 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”).

Based on the Complaint, and since there is no other evidence presented otherwise, the Panel concludes that Respondent has no made a use of the disputed domain name.  This is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

According to the evidence presented, Respondent is not commonly known as <flordecaña.com> and thus does not have a right or legitimate interest in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Based on the evidence presented, Respondent registered a domain name that incorporates a famous mark as soon as it was possible to register domain names that include the “ñ.”  This is evidence that Respondent has engaged in opportunistic bafd faith and therefore, has registered <flordecaña.com> in bad faith.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

Respondent has not made an apparent use of the disputed domain name.  This activity, or rather lack of activity, is evidence that Respondent has used the disputed domain name in bad faith.  See 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 requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <flordecaña.com> (BQ--ABTGY33SMRSWGYPRME.COM) domain name be transferred from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: May 14, 2002

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