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Generic Top Level Domain Name (gTLD) Decisions |
Alexis Burwell Vales v. Marc Mouse
Claim Number: FA0209000126647
PARTIES
Complainant
is Alexis Burwell Vales, Puerto
Vallarta, MEXICO (“Complainant”) represented by Donald M. Gindy. Respondent
is Marc Mouse, Puerto Vallarta,
MEXICO (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <lapuntarealty.com>,
registered with Register.com.
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.
Robert
T. Pfeuffer, Senior District Judge as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 30, 2002; the Forum
received a hard copy of the
Complaint on September 27, 2002.
On
September 30, 2002, Register.com confirmed by e-mail to the Forum that the
domain name <lapuntarealty.com>
is registered with Register.com and that the Respondent is the current
registrant of the name. Register.com
has verified that Respondent is bound by the Register.com 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
November 7, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 27, 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@lapuntarealty.com by
e-mail.
A
timely Response was received and determined to be complete on November 22, 2002.
Both
Complainant’s and Respondent’s additional submissions were timely.
On December 11, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Robert T. Pfeuffer,
Senior District Judge as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. That the domain name is identical to the
registered trademark held by Complainant in Mexico in connection with his
business of selling
real estate under the name of “La Punta Realty”.
2. That Respondent has no rights or
legitimate interest in respect to the domain name because he was a partner of
Complainant at the
time he was requested to register the domain name.
3. That the domain name has been registered
in bad faith by Respondent due to his use of the domain site to disrupt the
business of Complainant.
B.
Respondent
Respondent
contends that Complainant is in the real estate brokerage business at
Puerta
Vallerta, Mexico, but does not use the name “La Punta Realty”, but rather
another
name
in connection with a partnership and that he has never tried to do anything to
disrupt
Complainant’s business under the former name.
He further contends that his
only
purpose in utilizing the “La Punta Realty” website is to warn potential
American
investors
of the pitfalls in connection with purchasing real estate in Mexico.
C.
Additional Submissions
Please
note that Complainant has filed an additional submission and Respondent
merely
says that the matters raised in Complainant’s Additional Submission are
irrelevant
and
therefore he will not respond.
Complainant has responded to the Panel’s Order by supplying the letter
from Respondent to “Miguel” as ordered on December 20, 2002. It reveals the true facts regarding the
alias “Tony Best” as the party that registered the domain name in issue. Further, Respondent’s admissions regarding
the use of the website reveal his true intentions to gain advantage in his
present lawsuit
with Complainant and his partner.
1. The Panel finds that the domain name is
identical to the registered trademark LA PUNTA REALTY held by Alexis
Burwell-Vales in Mexico. That
Respondent, Marc Mouse is an alias of Alain Bali and he has also used other
aliases such as Max Flash and Tony Best.
This is confirmed in his letter attached as Exhibit “A” to Complainant’s
Rebuttal Brief that he addressed to “Miguel” stating that
he is Tony Best. The domain name <lapuntarealty.com>
is identical as numerous cases in the past have disposed of any assertion that
by adding the words “.com” to La Punta Realty does
not change the fact that the
domain name is identical to the registered trademark. See V Secret Catalogue, Inc. et al v. ARTCO, Inc.,
FA 94342 (Nat. Arb. Forum May 9, 2000).
2. The Panel further finds that Respondent
has no rights or legitimate interests in respect to the domain name because
Complainant had
utilized the common law trademark LA PUNTA REALTY in his
business of selling real estate from on or about June 10, 2001, a date which
was prior to the registration of the domain name <lapuntarealty.com>
which occurred on August 4, 2001. At
the time the mark was registered by Respondent, Respondent was associated with
Complainant’s real estate business as a partner
in the sale of homes and
condominiums. The Panel further finds
that Complainant is the holder of a trademark LA PUNTA REALTY in Mexico which
is identical to the domain name
registered by Respondent.
3. It is further found that Respondent
registered the name <lapuntarealty.com> using the name Tony Best
as registrant whereas the domain name was obtained by Respondent at the
specific request of Complainant
who did not authorize Respondent to register
the site under “Tony Best”. Respondent
has engaged in a pattern of utilizing the contested domain name for the purpose
of tarnishing the business of Complainant.
Confusion between Complainant’s business and the information being
directed to the public on Respondent’s website creates a likelihood
of
confusion in that the name contains the trademark held by Complainant. See Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000); Minnesota
Mining and Mfg. Co. vs. Taylor, 21 F. Supp.2d 1003, 1005 (D.Minn.1998); Intermatic
Inc. vs. Toeppen, 947 F.Supp.1227, 1235-1236 (N.D.Ill.1996).
4. The Panel finds that Mr. Bali has no
rights or legitimate interests in the real estate brokerage firm “La Punta
Realty”. It is therefore clear that the
defamatory and provocative language found on the <lapuntarealty.com>
website is creating confusion and misleading the consuming public. Respondent admits to his true purpose in his
letter to “Miguel” attached to Complainant’s Additional Response as Exhibit “A”
wherein
he states that his use of the website “is another way to fight to take
over Paradise Cove”.
5. The Panel finds that the domain name has
been registered in bad faith as exhibited by the actions of Respondent. By registering this domain name, Respondent
has prevented the lawful owner of the trademark from reflecting his trademark
in a corresponding
domain name in violation of Policy ¶ 4(b)(ii). Respondent’s use of the domain name to
disrupt the business of Complainant and his partner, constitutes violation of
Policy ¶ 4(b)(ii). By his use of the
domain name, the Panel finds that Respondent is attempting to deceive Internet
users by creating a likelihood of
confusion as to source, sponsorship,
affiliation or endorsement of the website.
The decision in El Paso County Hosp. Dist. v. Southwest-Tech., Inc.,
FA 114675 (Nat. Arb. Forum Aug. 7, 2002) addresses a similar set of
circumstances. An employee was
entrusted with filing a domain name for his employer. The employee did so, but named himself as administrative and
technical contact. After his
resignation, he attempted to obtain compensation from his former employer for
the domain names. While Respondent has
not requested compensation for the domain site, his actions are evidence of bad
faith and that he has attempted
to disrupt the business practices of the
trademark holder who should also be the rightful owner of the domain site.
DISCUSSION
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.
Identical and/or Confusingly Similar
The Panel finds that website registered
by Respondent is identical to the
trademark held under Mexican law by
Complainant.
Rights or Legitimate Interests
The Panel finds that Respondent has no
rights nor legitimate interests in the domain name
<lapuntarealty.com>.
Registration and Use in Bad Faith
The Panel finds that Respondent
registered the domain name when he was a partner of Complainant and should have transferred or registered the domain
name in
Complainant’s name rather than one of the
aliases under which he operates. The
Panel further finds that Respondent has
utilized the domain site for the purpose of
tarnishing the reputation of
Complainant’s business which he operates under the
trademark LA PUNTA REALTY. The
registration and use of the domain name by Respondent is in bad faith.
DECISION
The Panel orders that the domain name <lapuntarealty.com>
be TRANSFERRED forthwith to Complainant, Alexis Burwell Vales.
Robert T. Pfeuffer, Senior District
Judge, Panelist
Dated: January 6, 2003
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