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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marcario Casillas v. Maverick Group, Inc.
Case No. D2000-0340
1. The Parties
The Complainant is Marcario Casillas d/b/a Casillas Cigars, with place of business in Sacramento, California, United States of America (USA).
The Respondent is Maverick Group, Inc., with address in Reno, Nevada, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "casillascigars.com".
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
a) The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on April 27, 2000, and by courier mail received by WIPO on April 28, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On April 28, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. On May 3, 2000, WIPO completed its formal filing compliance requirements checklist.
b) On May 3, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail. WIPO transmitted the notification to Respondent at the separate addresses listed on its Network Solutions’ registration for Respondent, its Administrative Contact and its Technical Contact. The courier could not complete delivery at the addresses for Respondent and its Administrative Contact, and (per an e-mail exchange with WIPO) the Technical Contact appears to have been unwilling to retransmit the documents it received from WIPO to Respondent. WIPO’s attempted fax transmissions to the numbers provided by Respondent were unsuccessful. WIPO’s attempted e-mail transmission to the address provided for Respondent’s Administrative Contact was not successfully delivered (return notification "user unknown").
c) On May 26, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On May 27, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
d) On May 29, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint by post courier and e-mail.
e) On May 29, 2000, the Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by June 11, 2000. On May 29, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent’s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant, Marcario Casillas, is an individual resident of California in the business of manufacturing and selling cigars. Goods of Complainant are sold under the name "Casillas". Retail stores of Complainant are operated under the name "Casillas Cigars".
Complainant has submitted a service mark registration application (filed September 21, 1999) for "Casillas Cigars" on the Principal Register of the U.S. Patent and Trademark Office (PTO) covering retail cigar store services (serial number 75/804203)(Complaint, para. 13 and Annex C). Complainant has submitted a trademark registration application (filed September 21, 1999) for "Casillas" on the Principal Register of the U.S. Patent and Trademark Office (PTO) (serial number 75/804204)(Complaint, para. 13 and Annex C). Complainant indicates that the aforesaid applications are pending. There is no additional information on the record of this proceeding regarding the status of such applications.
Complainant indicates that it has used "Casillas" and "Casillas Cigars" in commerce in the United States since at least as early as 1973 (id., para. 14), and such information is included on Complainant’s PTO applications for registration (id., Annex C). Complainant has provided copies of advertising brochures prepared for and used in its "Casillas Cigars" retail business (id.).
Respondent registered and used the disputed domain name "casillascigars.com". A Network Solutions’ WHOIS database query response (Complaint, Annex A) indicates that Maverick Group, Inc., with Administrative Contact at "Provost, Gus", is the registrant of the domain name "casillascigars.com". The record of this registration was created on June 26, 1998, and was last updated on July 24, 1998.
In April or May 1999, Complainant and Respondent entered into an oral agreement under which Respondent was licensed to operate a retail cigar store in Las Vegas, Nevada, USA under the "Casillas Cigars" name and mark. Respondent operated such store for approximately two months.
On April 22, 1999, Respondent filed an application to register the mark "Casillas Cigars" (stylized) on the Principal Register (serial number 75/688,075). In response to threat of litigation for infringement, unfair competition and dilution by Complainant (by letter of September 9, 1999) (id., Annex E), Respondent filed a notice of express abandonment of the aforesaid application on October 26, 1999. Respondent, however, had indicated by e-mail of October 6, 1999 to Complainant that its attempted registration of the "Casillas Cigars" had been denied by the PTO ("as I recall the registration was denied because the mark is primarily a surname") (id., Annex G).
By letter of September 9, 1999 (id., Annex E) Complainant demanded that Respondent transfer the disputed domain name to it, on grounds that Respondent’s use of the name would likely cause consumer confusion. Respondent disputed Complainant’s statement of facts surrounding the trademark application, and indicated:
"The domain name has been in use, also with the blessing of Mr. Casillas, who gladly supplied me with the cigars that were sold over the Internet from the site."
"As Mr. Casillas may or may not have told you, they bought out my interest in the Las Vegas store in May of this year, and I have not had any association with them since that time, which includes Internet sales. The cigar site is inoperative, and will remain so until the expiration of the registration next year. If Mr. Casillas wants the domain name, he can purchase the name and site from me at a reasonable cost." (Respondent’s e-mail to Complainant of October 6, 1999, id., Annex G)
Responding to a subsequent e-mail from Complainant regarding the status of this trademark and domain name dispute, Respondent stated:
"Re the website, I differ with your contention that this belongs to Mr. Casillas. As you are probably aware, I registered the domain name and developed the site with the full cooperation and approval of Mr. Casillas. The site included various Casillas Cigar stores, individuals who work for them, and a history of the company. In addition, Mr. Casillas provided the cigars for retail sale, as both of our records will indicate. As such, I am not willing to simply give this away. I am willing to sell the domain name for the sum of $2,500, which roughly covers my development and hosting costs to this point. Sincerely yours, Gus Provost" (Respondent’s e-mail to Complainant of October 15, 1999, id., Annex H)
Complainant furnished the foregoing correspondence with Respondent. The authenticity of said correspondence is not in dispute.
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.
5. Parties’ Contentions
"Complainant CASILLAS has operated a cigar-manufacturing business, first in Cuba and then in the United States, for more than forty years. Complainant CASILLAS currently manufactures cigars at a plant in Sacramento, California. Complainant CASILLAS also operates eight retail outlets for cigars under the CASILLAS CIGARS service mark." (Complaint, para. 12)
Complainant indicates that it has filed a service mark registration application with the PTO for "Casillas Cigars" and a trademark application for "Casillas" in September 1999 (Id., para. 13) (see Factual Background supra).
Complainant indicates that the "Casillas" marks have been used in commerce since at least October 1973, and Complainant has invested substantial time and resources in promoting and advertising the marks in the United States (id., paras. 14-15).
"16. As a result of the foregoing, Complainant CASILLAS has developed extremely valuable goodwill and an outstanding reputation in the Marks. The Marks are famous and are an indication of high quality and of origin exclusively with Complainant."
"17. In approximately April or May 1999, Complainant CASILLAS and respondent MAVERICK entered into a verbal agreement under which Respondent MAVERICK was licensed to operate a retail cigar store in Las Vegas, Nevada, under the CASILLAS CIGARS name and mark. Respondent MAVERICK operated the store for approximately two months after which it abandoned the venture. At no time did Respondent MAVERICK have permission to register the domain name casillascigars.com or to develop a web site in connection with the Marks, nor was it granted any rights in the Marks, other than the right to use the Marks for a retail cigar store, under license, on a non-exclusive basis, limited to the Las Vegas geographic market." (Id.)
Complainant indicates that Respondent attempted to register the "Casillas Cigars" mark without its consent, and upon warning from Complainant agreed to and did abandon its application (id., paras. 18-21) (see Factual Background supra).
"19. Even after the license agreement between Complainant CASILLAS and Respondent MAVERICK terminated, Respondent MAVERICK continued to operate a web site in connection with the casillascigars.com domain name and under the Marks. A print-out from the web site as of August 12, 1999, is attached as Annex D." (Id.)
Complainant states that Respondent registered the disputed domain name without its consent, is no longer its licensee, and was never authorized to use the "Casillas Cigars" mark in connection with a website (id., para. 22).
Complainant states that the disputed domain name is identical to the "Casillas Cigars" mark (id., para. 22).
Complainant states on information and belief that Respondent has registered and used the disputed domain name in bad faith, and that Respondent has no rights or legitimate interests in the disputed domain name.
"26. In the same September 9, 1999, letter by which counsel for Complainant CASILLAS demanded that Respondent MAVERICK cease use of the Marks, counsel for Complainant CASILLAS also demanded that Respondent transfer the domain name casillascigars.com to Complainant.
27. Respondent MAVERICK responded to this demand by offering to sell the domain name casillascigars.com to Complainant. See Annex G.
28. Respondent MAVERICK subsequently set a price of $2,500 for the domain name and website content. See Annex H." (Id.)
Complainant indicates that "it is simply beyond dispute that Complainant CASILLAS is the owner of the CASILLAS CIGARS mark" (id., para, 30), and that its twenty-six year exclusive use establishes this.
"31. Respondent MAVERICK has never been authorized by Complainant CASILLAS to use the CASILLAS CIGARS mark as a domain name or in any other manner in connection with a web site. Further, Respondent MAVERICK’s limited right to use the Marks in connection with the operation of a retail cigar store in Las Vegas, Nevada, has long since terminated. As held in Heel Quik!, Inc. v. Goldman, File No. 92527 (NAF March 1, 2000), use of a domain name in violation of a license agreement cannot be a bona fide use within the meaning of the Policy. In that case, as here, the respondent obtained no ownership interests in the complainant’s trademark and thus cannot be said to have any rights or legitimate interests in respect of the domain name." (id.)
"33. Respondent MAVERICK’s registration of a second level domain name almost identical to Complainant’s CASILLAS CIGARS mark, coupled with its offer to sell the domain name to Complainant, establishes that Respondent has used and registered the domain name in bad faith under the criteria set forth in Section 4(b)(i) of the UDRP. Cf. World Wrestling Federation Entertainment, Inc., v. Bosman, Case No. D99-0001 (WIPO Jan. 14, 2000) (‘use and registration’ was found under Section 4(b)(i) of the UDRP because the respondent’s offer to sell the domain name in issue established that the respondent registered the domain name primarily for the purpose of selling it to the complainant and therefore registered and used it in bad faith); America Online, Inc., v. QTR Corp., Forum File No. FA0001000092016 (NAF Feb. 10, 2000) (identifying registrant as ‘This domain name is for sale’ in Whois directory showed intent to sell registration for profit and established bad faith); Stella D’oro Biscuit Co., Inc., v. The Patron Group, Inc., Case No. D00-012 (WIPO Feb. 17, 2000) (circumstantial evidence supports findings of no legitimate rights or interests in the domain name and that domain name has been registered and is being used in bad faith, including willingness to sell domain name for $2,300); Mary-Lynn Mondich, American Vintage Wine Biscuits, Inc. v. Shane Brown, Case No. D00-0004 (WIPO Feb. 20, 2000) (respondent asked complainant if she would like to ‘buy’ the domain name; without contrary evidence, it may be assumed that the registrant initially intended to ‘sell’ it to complainant, supported by failure to make good faith use of domain name for a substantial period of time – over two years); Robert Ellenbogen v. Mike Pearson, Case No. 00-0001 (WIPO Feb. 20, 2000) (respondent/administrative contact asserted no relationship to domain name and asked that his name be removed; domain name was listed on the ‘GreatDomains.com’ web site for sale; fact of trying to sell it supports finding of bad faith, even though there is no evidence that this was the primary intent when the domain name was registered).
34. The offer to sell the domain name for a sum well in excess of the cost of registration strongly evidences that Respondent MAVERICK used and registered the domain name in bad faith. Moreover, nothing in the Policy, however, indicates that direct evidence of bad faith must be presented. To the contrary Section 4(b) simply enumerates some of the ‘circumstances’ to be considered. As stated in the ICANN Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (posted October 25, 1999), ‘the delineation of evidence of bad-faith is not intended to be exhaustive.’ <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>. See also Thomas v. Dillard Dep’t Stores Inc., 116 F.3d 1432, 1437 (11th Cir. 1997) (stating that intent can be inferred from conduct as well as circumstances); Ingersoll v. Kriseman, 124 B.R. 116, 121 (M.D. Fla. 1991) (stating that intent can be proven by circumstantial evidence or inferred from actions); Da Costa v. Public Employees Relations Comm’n, 443 So.2d 1036, 1041 (Fla. Dist. Ct. App. 1983) (stating that intent can be inferred where the result is the reasonably foreseeable consequence of conduct).
35. Additionally, Respondent MAVERICK’s continued use of the casillascigars.com domain name to offer the same product as that sold by the Complainant, i.e. cigars, after the termination of its license implies that Respondent intended to attract, for commercial gain, Internet users to the registrant’s web site by creating a likelihood of confusion with the Complainant’s mark as set forth in Section 4(b)(iv) of the UDRP. See FaceTime Communications v. Live Person, Inc., Forum File No. FA0001000092048 (NAF Feb. 18, 2000) (holding that ‘[u]se of marks which are so similar for the same services confuse the public and those desiring to obtain a particular entity’s services and products.’).
- There is simply no conclusion to be drawn from the circumstantial evidence other than that Respondent MAVERICK either (i) primarily intended (or intends) to sell the domain name casillascigars.com to Respondent and/or (ii) intended to attract, for commercial gain, Internet users to the registrant’s web site, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. This is precisely the type of bad faith behavior that is intended to be penalized under the Policy." (id.)
Complainant requests that the Panel ask the Registrar to transfer the domain name "casillascigars.com" from Respondent to it (id., para 37).
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 1. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. Based on a detailed record of attempts by WIPO to contact Respondent, it remains unclear whether Respondent has received actual notice of this proceeding. (See Factual Background, supra). Respondent was well aware of the possibility that this proceeding would be initiated by Complainant, and to the extent that Respondent failed to update its Registration information to allow it to be contacted, difficulties (if any) in respect to notification are due to its own actions or inactions. Moreover, in light of the Panel’s determination in this proceeding, Respondent has not been prejudiced by lack of actual notice.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
The first issue to decide is whether the Complainant has rights in a trademark or service mark.
Complainant has filed an application for registration of the service mark "Casillas Cigars" on the Principal Register at the PTO, and has provided evidence of its use of that service mark in commerce. Complainant has alleged use of the mark in commerce since at least 1973 (see Factual Background, supra). The Policy requires that a Complainant have "rights" in a trademark or service mark that is subject to abuse by a Respondent (Policy, para. 4(a)(i)). It does not require that a mark be registered by a governmental authority for such rights to exist. In U.S. law, trademark infringement actions may be brought under the unfair competition provisions of the Lanham Act on the basis of unregistered marks (and common law rights) 2, and U.S. legislation authorizing infringement actions based on abusive domain name registration does not require registration of a mark as a condition for obtaining relief 3. In U.S. law, an application for trademark registration on the Principal Register constitutes constructive use of a mark, contingent on subsequent registration 4.
A claim based on an unregistered mark, including a personal name, requires that the claimant establish the distinctive character of the mark or name on which the claim is based 5.
In this proceeding, Complainant has made a prima facie offering that the "Casillas Cigars" mark is distinctive. Respondent has, in effect, challenged this prima facie offering by suggesting in an e-mail to Complainant that the PTO rejected Respondent’s application for that mark on the basis that "Casillas" is a surname. However, since Respondent, not Complainant, was acting before the PTO, and Respondent in any case made its assertion as a tentative recollection (and without documentary support), the Panel does not accept this as a valid challenge to the distinctive character asserted by Complainant.
Respondent has not effectively rebutted Complainant’s claim to rights in the "Casillas Cigars" service mark. Complainant’s claim to rights in the mark requires it to pass at least two important hurdles in order to meet the test of having acquired distinctiveness or secondary meaning. "Cigars" is generic and, standing alone, it is not capable of being trademarked. In order to establish trademark rights in a generic term, it must be shown to have acquired secondary meaning in combination with another term or symbol, and courts traditionally have imposed stringent tests to demonstrate such secondary meaning. In addition, "Casillas" is a surname and must be demonstrated to have acquired secondary meaning (in combination with "Cigars"). Complainant’s claim to rights in the "Casillas Cigars" mark is not strong (e.g., there is limited evidence of the scope of usage and consumer association). However, for purposes of this administrative proceeding, the Panel presumes that Complainant has rights in the service mark, "Casillas Cigars". The Panel makes this determination in order to reach the "legitimate interests" element of Complainant’s complaint, and without intending to establish evidence of Complainant’s rights to the mark in any subsequent legal proceedings.
Respondent has registered the domain name "casillascigars.com". This name is identical to Complainant’s presumptive service mark "Casillas Cigars", except that (1) the domain name eliminates the space between the two words constituting the mark, (2) the domain name adds the generic top-level domain name ".com", and (3) the domain name employs lower case letters, while the service mark is generally used with an initial capital letter on each word. For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondent’s domain name is "identical" to Complainant’s service mark, since Respondent’s domain name "casillascigars.com" is without doubt confusingly similar to Complainant’s service mark "Casillas Cigars".
Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a service mark in which the Complainant presumptively has rights, and for purposes of this proceeding it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
The second element of a claim of abusive domain registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
… before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; …" (Policy, para. 4(c))
The disputed domain name was registered by Respondent in June 1998. Complainant indicates that it orally licensed Respondent to use its mark in connection with a retail store in April or May 1999. Complainant supplied its products to Respondent for sale, and Respondent indicates that it sold those products from its website on the Internet. Complainant did not formally object to Respondent’s registration and use of the disputed domain name until September 1999.
Complainant alleges in its complaint that Respondent was not authorized to register the disputed domain name or to establish a website. However, Respondent registered the disputed domain name substantially prior to Complainant’s acknowledged grant of a license for use of Complainant’s service mark. Respondent has indicated that (a) Respondent designed its website with Complainant’s knowledge (and participation) and (b) that Complainant supplied it with the product it sold over the Internet. Complainant has not asserted that it was unaware of Respondent’s domain name registration or website development prior to granting an oral license to use its mark in connection with Respondent’s retail store.
Respondent deactivated the website identified by the disputed domain name after its business relationship with Complainant ended. (Complainant’s printout showing the Respondent’s active site is dated August 12, 1999.)
The Panel determines that, on the basis of the record before it, Respondent, before any notice to it of a dispute, used the disputed domain name for a bona fide offering of goods legitimately acquired from Complainant. As such, Respondent has a legitimate interest in the disputed domain name within the meaning of paragraphs 4(a)(ii) and 4(c)(i) of the Policy.
Complainant has failed to establish the second element necessary for a finding that Respondent engaged in abusive domain name registration. The Panel therefore rejects Complainant’s claim of abusive domain name registration against Respondent, and denies its request that the Panel ask the registrar to transfer the domain name "casillascigars.com" from Respondent to it.
The Panel’s determination is limited to the question whether Respondent engaged in abusive domain name registration. This is the boundary line of the Panel’s authority. The Panel makes no determination regarding the respective rights of the parties in regard to other legal questions.
Complainant, Marcario Casillas, has failed to establish that Respondent, Maverick Group, Inc., has no rights or legitimate interests in the disputed domain name "casillascigars.com" within the meaning of paragraph 4(a)(ii) of the Policy. The Panel therefore rejects Complainant’s claim of abusive domain name registration against Respondent, and denies its request that the Panel ask the registrar to transfer the domain name "casillascigars.com" from Respondent to it.
Frederick M. Abbott
Dated: June 11, 2000
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. 15 USCS § 1125(a). See, e.g., Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1047, n. 8, (9th Cir. 1999).
3. 15 USCS § 1125(d).
4. 15 USCS § 1057(c).
5. U.S. cyberpiracy prevention legislation protects distinctive and famous marks. In order to be famous, a mark must be distinctive. 15 USCS § 1125(c).