diablitosunderwood.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Incorporated v. N2 Sistemas.com

Case No. D2005-0889

1. The Parties

The Complainant is Pet Incorporated, Caracas, Venezuela, represented by Manuel Polanco, Venezuela.

The Respondent is N2 Sistemas.com, Attn: Narvaez, Nelson, Caracas, Venezuela ; Technical Contact:, Mr. Javier Nuñez, Caracas, Venezuela.

2. The Domain Name and Registrar

The disputed domain name <diablitosunderwood.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2005. On August 19, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On August 19, 2005, Tucows transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 14, 2005. The Center verified that the Complaint together with the amendment to 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 September 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2005.

The Center appointed Sandra Franklin as the sole panelist in this matter on October 31, 2005. The Panel finds that it was properly constituted. 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

Complainant is the owner of Registered Trademarks DIABLITOS and UNDERWOOD, well-known and widely used in commerce, in the food sector, since 1896, in Venezuela.

5. Parties’ Contentions

A. Complainant makes the following assertions:

1. Respondent’s <diablitosunderwood.com> domain name is confusingly similar to Complainant’s DIABLITOS and UNDERWOOD marks.

2. Respondent does not have any rights or legitimate interests in the <diablitosunderwood.com> domain name.

3. Respondent registered and used the <diablitosunderwood.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

6. Discussion and Findings

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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. SeeVertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (National Arbitration Forum, July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); See alsoTalk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (February 29, 2000).

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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.

A. Identical or Confusingly Similar

Complainant has provided proof of its registration of the DIABLITOS and UNDERWOOD marks with the appropriate authority in Venezuela. Complainant’s registration of its marks with a governmental authority establishes a prima facie case of Complainant’s rights in the marks pursuant to Policy, paragraph 4(a)(i). SeeVivendi Universal Games v. XBNetVentures Inc., FA 198803 (National Arbitration Forum, November 11, 2003) (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”). See also Janus Int’l Holding Co. v. Rademacher, WIPO Case No D2002-0201 (March 5, 2002) noting that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. No rebuttal evidence has been offered.

The <diablitosunderwood.com> domain name includes Complainant’s DIABLITOS and UNDERWOOD marks in their entirety and adds only the “.com” suffix. The dominant impression of the domain name is that of the registered trademarks belonging to Complainant. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks. See Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (December 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).

The Panel finds that Complainant has satisfied its requirements under Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Respondent has failed to submit a response in this proceeding. In the absence of a response, the Panel accepts as true all reasonable allegations contained in the Complaint unless clearly contradicted by the evidence. Complainant has alleged that Respondent lacks rights and legitimate interests in the domain name <diablitosunderwood.com>. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (National Arbitration Forum, July 31, 2000) holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a complainant to be deemed true.

Because Respondent has failed to submit a response, Respondent has failed to propose any set of circumstances that could substantiate its rights or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., WIPO Case No. D2000-0023 (March 9, 2000) finding that by not submitting a response, the respondent failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name.

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy, paragraph 4(c)(i), nor is Respondent making a legitimate noncommercial or fair use of the domain name pursuant to Policy, paragraph 4(c)(iii).

No evidence before the Panel suggests that Respondent is commonly known by the domain name under Policy, paragraph 4(c)(ii). The WHOIS information lists N2 Sistemas.com as the Registrant of <diablitosunderwood.com> and Javier Nunez and Nelson Narvaez as the administrative and technical contacts. Respondent is not authorized or licensed to use Complainant’s marks for any purpose. See Tercent Inc. v. Yi, FA 139720 (National Arbitration Forum, February 10, 2003) stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining whether Policy, paragraph 4(c)(ii) applies; see also RMO, Inc. v. Burbridge, FA 96949 (National Arbitration Forum, May 16, 2001) interpreting Policy, paragraph 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”.

he Panel finds that Respondent lacks rights and legitimate interests in the domain name and that Policy, paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Complainant’s DIABLITOS and UNDERWOOD registered marks are long-standing, well-known marks in wide use in the world and in Caracas, Venezuela. Respondent resides in Caracas, where Complainant’s marks have achieved significant notoriety. The Panel infers that Respondent registered the disputed domain name with knowledge of Complainant’s rights in the marks due to Complainant’s widespread use and registration of the marks.

Respondent did not provide evidence that would suggest that Respondent is holding the <diablitosunderwood.com> domain name for any non-infringing purpose. Without an indication that Respondent registered the domain name with the intention of using it for a legitimate purpose, the Panel finds that Respondent’s passive holding of the <diablitosunderwood.com> domain name constitutes bad faith registration and use under Policy, paragraph 4(a)(iii). See DCI S.A. v. Link Commercial Corp., WIPO Case No. D2000-1232 (December 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (November 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 alsoCaravan Club v. Mrgsale, FA 95314 (National Arbitration Forum, August 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see alsoPhat Fashions, LLC v. Kruger, FA 96193 (National Arbitration Forum, December 29, 2000) (finding bad faith under Policy, paragraph 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).

The Panel finds that Complainant has satisfied its requirements under Policy, paragraph  4(a)(iii).

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 <diablitosunderwood.com> be transferred to the Complainant.

Sandra Franklin
Sole Panelist

Dated: November 14, 2005