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ADMINISTRATIVE PANEL DECISION
Adela Comйrcio de Embalagens Artesanais Ltda v. Adrenalin Rush, Inc.
Case No. D2007-0392
1. The Parties
The Complainant is Adela Comйrcio de Embalagens Artesanais Ltda, (Calband Ltda. Intellectual Property), SГЈo Paulo-SP, Brazil, of Brazil, represented by Carlos Eduardo Calvielli Berйa, Brazil.
The Respondent is Adrenalin Rush, Inc., EmeryVille, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <aledaoriginal.com> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2007. On March 15, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On March 19, 2007, Melbourne IT trading as Internet Names Worldwide 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 and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 5, 2007. 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 April 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2007.
The Center appointed Ross Carson as the sole panelist in this matter on May 16, 2007. 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
The founders of Complainant created a transparent cigarette paper in 2005. Complainant was incorporated to manufacture, sell and export the transparent cigarette paper. The sale of transparent cigarette paper in association with the trademark ALEDA was launched in February 2006 in Brazil. Currently ALEDA transparent cigarette paper is sold in more than twenty countries.
Complainant is the owner of a Brazilian trademark application for ALEDA filed on May 8, 2006, and United States trademark application for ALEDA filed on September 29, 2006, in relation to cigarette rolling papers. Complainant is also the owner of the domain name <aleda.com.br> registered on April 11, 2006.
The domain name in dispute <aledaoriginal.com> was registered on August 26, 2006.
5. Parties’ Contentions
A.1 Identical or Confusingly Similar
Complainant has been using its trademark ALEDA in relation to transparent cigarette papers since February 2006. Respondent registered the domain name in dispute <aledaoriginal.com> on August 26, 2006. Complainant submits that the webpage associated with the domain name in dispute contains a direct link to “smokeclear” a clear cigarette smoking paper. Complainant submits that the domain name in dispute is confusingly similar to Complainants trademark ALEDA as the distinctive element of the domain name in dispute is Complainants trademark ALEDA.
A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant states that there is no evidence of the Respondent’s use the domain name <aledaoriginal.com> in connection with a bona fide offering of goods or services. Complainant further submits that the Respondent has not been commonly known by the domain name in dispute.
Complainant further states that when Internet users access Respondent’s domain name <aledaoriginal.com> it advertises SMOKECLEAR transparent cigarette rolling papers and provides a telephone number for orders. Complainant submits that the use of the domain name in dispute to confusingly attract Internet users to Respondent’s website to sell Respondent’s “SMOKECLEAR” transparent cigarette rolling papers is not a legitimate use of the domain name <aledaoriginal.com>.
A.3 Registered and Used in Bad Faith
Complainant states that it contacted Yahoo! Search Marketing in January 2007 to inform them that when Internet visitors searched for the word “ALEDA” on the Yahoo search engine, the results indicated the domain name <aledaoriginal.com> as a sponsored website.
Complainant further states that considering that the website associated with the domain name <aledaoriginal.com> offers SMOKECLEAR products instead of ALEDA products, Yahoo! Search Marketing removed it from the sponsored results.
Complainant submits that on March 1, 2007, Complainant’s representative sent a cease and desist letter in order to demand that Respondent immediately cease the mentioned abusive practice, by transferring the domain name in dispute to Complainant and to refrain from henceforth hosting for any purpose any domain names or trademarks which infringe Complainant’s rights.
Complainant states that on March 5, 2007, Respondent replied to said letter and informed Complainant that it would cease the advertisement campaign immediately. However, the domain name <aledaoriginal.com> remains in use by Respondent, which corresponds to an act of bad faith.
Complainant submits that the domain name <aledaoriginal.com> was registered primarily for the purpose of disrupting the business of the Complainant.
Complainant further submits that Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark.
The Respondent did not reply to the Complainant’s contentions.
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”.
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.
The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of the Respondent to file a Response results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM,
WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to Paragraph 4(a)(i) of the Policy the Complainant must establish rights in a trademark and secondly that the domain name in dispute is confusingly similar to the trademark in which the Complainant has rights.
Complainant is not the owner of a registered trademark for ALEDA. However it is now well established, see e.g. the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and previous panel decisions cited therein found that a complainant may assert common-law or unregistered trademark rights if the trademark has become a distinctive modifier associated with complainant or its goods or services.
In 2005 the founders of Complainant decided to launch a different cigarette paper from cigarette papers currently available. Complainant developed a transparent cigarette paper composed of 100% natural regenerated cellulose film, which comes from wood pulp and does not alter the tobacco taste, is biodegradable, odorless, innocuous and combusts slower than traditional rolling papers. The transparent cigarette paper was launched in association with the trademark ALEDA in Brazil in February, 2006 and became popular all over Brazil. Trademark applications have been filed by Complainant in Brazil, the United States and the European Union for the trademark ALEDA in relation to the goods cigarette rolling papers. ALEDA transparent cigarette rolling papers are currently being sold in over 20 countries. Complainant has shown and prompted its ALEDA transparent cigar rolling papers at specialized fairs in Amsterdam, Barcelona and Madrid.
The panel finds that Complainant has shown that the trademark ALEDA is distinctive of Complainant’s transparent cigarette rolling paper among those manufacturing transparent cigarette rolling papers and among users of transparent rolling papers in Brazil.
The domain name in dispute is comprised of Complainant’s trademark ALEDA in combination with the descriptor “original”. Many panels have held that “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. Pfizer Inc. v. United Pharmacy Ltd.,
WIPO Case No. D2001-0446.
The panel finds that Complainant has shown that the domain name in dispute is confusingly similar to Complainant’s trademark ALEDA.
B. Rights or Legitimate Interests
Pursuant to Paragraph 4(a)(ii) of the Policy Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.
The available record indicates that the Respondent has no United States trademark registration for the trademark ALEDAORIGINAL. Respondent appears to offer its transparent cigarette rolling paper for sale in association with the trademark “smokeclear”. The Complainant states that the Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to use Complainant’s trademark or any trademark confusingly similar thereto.
The web page associated with the domain name in dispute displays a sponsored link to Respondent’s “smokeclear”clear cigarette rolling papers. Previous UDRP decisions have consistently found that the use of a confusingly similar domain name to misdirect Internet users to respondent’s website offering respondent’s competitive goods for sale is not a legitimate use of a domain name.
It is difficult for a Complainant to prove the negative that the Respondent does not have any rights or legitimate interests in a domain name in dispute. The Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the domain name in dispute pursuant to Paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the domain name in dispute. The Respondent did not file a reply and avail itself of the benefits of Paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent does not have any rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
The Panel finds that the circumstances of this case indicate that the Respondent registered the domain name in dispute with actual knowledge of Complainant’s trademark ALEDA, previously used by Complainant in association with transparent cigarette rolling paper. Respondent appears to offer clear or transparent cigarette rolling paper for sale in association with the mark “smokeclear”. The domain name in dispute is a combination of Complainant’s trademark ALEDA in combination with the descriptor “original”. Although Respondent had the opportunity to explain why it registered the domain name incorporating Complainant’s trademark fully as the distinctive portion of the domain name in dispute the Respondent did not choose to file a Response.
The Panel finds that the Respondent is using the confusingly similar domain name <aledaoriginal.com> to intentionally attempt to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s trademark as to source, sponsorship, affiliation or endorsement of Respondent’s website constituting bad faith use under Paragraph 4(b)(iv) of the Policy.
Accordingly, the panel finds that the Respondent registered and is using the domain name in dispute in bad faith.
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 <aledaoriginal.com> be transferred to the Complainant.
Date: May 30, 2007