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Alexander Hughes International v. Anthony Inglis-Arkell [2005] GENDND 440 (27 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Campero International, Corp., Campero International Limited, Campero International, S.A., Campero USA Corp., Pollo Campero, S.A., Pollo Campero, S.A. de C.V., Pollo Campero de Honduras, S.A. de C.V. v. Jordan Data Communication Services Company

Case No. D2004-1105

1. The Parties

The Complainants are Campero International, Corp., Road Town, Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland; Campero International Limited, Bridgetown, Barbados; Campero International, S.A., Panama, Panama; Campero USA Corp., Wilmington, Delaware, United States of America; Pollo Campero, S.A., Guatemala, Guatemala; Pollo Campero, S.A. de C.V., Soyapango, El Salvador; Pollo Campero de Honduras, S.A. de C.V., Tegucigalpa, Honduras, represented by Rodriguez, Archila, Castellanos, Solares & Aguilar, S.C., Guatemala.

The Respondent is Jordan Data Communication Services Company, Amman, Jordan.

2. The Domain Name and Registrar

The disputed domain name <cambolero.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2004. On January 4, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On January 11, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2005.

The Center appointed Jeffrey M. Samuels, Martin Michaus Romero and Nasser A. Khasawneh as panelists in this matter on March 15, 2005. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainants are the owners, among others, of the marks CAMPERO, CAMPERO and DESIGN, POLLO CAMPERO, and POLLO CAMPERO and DESIGN, as used in connection with restaurant services since 1971, in various countries in Central America, including Guatemala, El Salvador, Honduras, Nicaragua, Costa Rica, Panama, Ecuador, and Mexico. The mark also has been used in various cities in the United States of America since 2002. At this time, a total of 187 CAMPERO restaurants have been opened around the world.

Complainants have registered in 24 countries the marks CAMPERO, CAMPERO and DESIGN, POLLO CAMPERO, and POLLO CAMPERO and DESIGN, as used on or in connection with various food products and business and restaurant services. The design element of Complainants’ marks consists of a distinctive looking chicken facing forward wearing a hat and holding a tray of food. Complainants also own a number of domain names, including <campero.com> and <pollocampero.com>.

5. Parties’ Contentions

A. Complainant

Complainants assert that the disputed domain name is confusingly similar to the CAMPERO-related marks in that: (1) <cambolero.com> is grammatically and phonetically similar to CAMPERO; (2) Respondent uses the same design element as found in Complainants’ marks; and (3) Respondent’s web site features the same kind of menus as used by Complainants.

Complainants further allege that Respondent cannot demonstrate or establish a legitimate interest in the disputed domain name because such name was registered long after the CAMPERO rights were established. Complainants note that Respondent, through an affiliate, has secured a trademark registration in Jordan for the mark CAMBOLERO and DESIGN and has filed other applications to register such term, which applications have been opposed by one of Complainants.

Complainants also maintain that they have not licensed or otherwise granted permission to Respondent to use the disputed domain name.

With respect to the requirement that the domain name be registered and used in “bad faith,” Complainants assert that, by using the disputed name, Respondent intentionally attempted to attract for commercial gain internet users to Respondent’s web site by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or of the products or services offered at such site. Complainants also allege that the domain name was registered primarily for the purpose of disrupting the business of a competitor.

As further evidence of the requisite “bad faith,” Complainants point to Respondent’s inclusion of information about Guatemala, the country of origin of the CAMPERO mark. According to Complainants, this indicates that Respondent was well-aware of Complainants’ CAMPERO restaurant services at the time Respondent registered its name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel determines that, based on their longstanding use of, and registrations covering, the CAMPERO-related marks, Complainants have rights in such marks. The Panel further notes that the disputed domain name, <cambolero.com>, begins and ends with the same three letters as found in the CAMPERO mark and that the letter “p” sounds similar to the letter “b.” Based on this phonetic similarity, the Panel concludes that the domain name is confusingly similar to the CAMPERO mark.

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances set forth in paragraph 4(c) of the Policy appears applicable to the facts of this case and, as alleged in the complaint, Complainants have not licensed or otherwise authorized Respondent to use the disputed domain name.

While the evidence indicates that Respondent operates a restaurant in Amman, Jordan, the Panel concludes that Respondent may not be found to have used the domain name in connection with the “bona fide” offering of services, within the meaning of paragraph 4(c)(i) of the Policy. The clear weight of previous UDRP panel decisions is to the effect that the use of a domain name that is identical or confusingly similar to a complainant’s mark is not a “bona fide” use. See, e.g., Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057 (March 22, 2000).

C. Registered and Used in Bad Faith

Finally, the Panel determines that the disputed domain name was registered and is used in bad faith. More specifically, the Panel finds that, through its use of the <cambolero.com> domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to its web site by creating a likelihood of confusion with respect to the source of such site and the goods and services offered therein. As noted above, the disputed domain name is phonetically similar to the CAMPERO mark. The existence of a likelihood of confusion is further heightened in this case by Respondent’s use of the design element strikingly similar to Complainants’ “chicken” design and Respondent’s use of its name and design in connection with the sale of food products and the offering of services, i.e., the operation of chicken restaurants, identical to those sold and offered by Complainants under their CAMPERO-related marks.

The Panel further observes that Respondent refers prominently on its site to Guatemala, Complainants’ country of origin. In the Panel’s view, the reference to Guatemala would further reinforce an internet user’s mistaken belief that Respondent’s site, and the goods and services advertised on such site, are associated or affiliated with Complainant.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cambolero.com> be transferred to Complainant Pollo Campero, S.A.

Jeffrey M. Samuels Presiding Panelist
Martin Michaus Romero Panelist	Nasser A. Khasawneh Panelist

Dated: March 31, 2005