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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CCM IP S.A. v. Traverito Traverito

Case No. D2007-0542

 

1. The Parties

The Complainant is CCM IP S.A., c/o Romeo Arnoldo Ruiz Lуpez, Lausanne, Switzerland, represented by Holland & Knight LLC, United States of America.

The Respondent is Traverito Traverito, Barcelona, Spain.

2. The Domain Name and Registrar

The disputed domain name <solbeer.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2007. On April 12, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On April 16, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response naming a registrant and providing contact details. The Center found this information to be at variance with its own checks and on May 10, 2007 Moniker Online Services, LLC provided corrected registrant name and contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 18, 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 May 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2007.

The Center appointed Clive N.A. Trotman as the sole panelist in this matter on July 2, 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

This statement of the background information relies on information provided by the Complainant together with supporting information in the form of annexes.

The Complainant is the intellectual property holding company of the Mexican brewer Cerveceria Cuauhtemoc Moctezuma, S.A. de C.V. The parent company (hereafter consolidated with the Complainant) was founded in 1890 and has been operating continuously since then. The Complainant produces beers with names including Tecate, Carta Blanca, Dos Equis, Sol, and Bohemia. “SOL” is the name of a beer that has been produced by the Complainant (or its predecessor in interest) since as early as 1899. For many years, SOL beer has been one of the leading beers exported from Mexico.

The Complainant and its licensee invest millions of dollars each year in developing and promoting the SOL brand.

Only the Complainant has registered or used the mark SOL in the United States of America. The trademark SOL is the subject of numerous United States of America trademark registrations including:

SOL & design registered on January 14, 1992 in Class 25 for “clothing for men, women and children; namely, T-shirts, sweatshirts, golf shirts, jackets, sweaters, pants, hats, socks, belts and buckles, and aprons” (Reg. No. 1,671,851), date of first use January 1975.

SOL Cerveza Especial Imported Beer Orizab Veracruz & Design registered on August 8, 1989, in Class 32 for “beer” (Reg. No. 1,551,192), date of first use of 1915.

SOL, registered on July 21, 1992 in Class 32 for “beer” (Reg. No. 1,702,032), date of first use of 1915.

The disputed domain name appears to have first been registered on December 12, 1999.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in the trademark SOL on the basis of the trademark registrations submitted in evidence.

The Complainant contends that the disputed domain name <solbeer.com> is confusingly similar and identical to the registered trademark SOL of the Complainant. Furthermore the disputed domain name is used by the Complainant for promoting alcoholic beverages. The Complainant cites Shields v. Zuccarini (254 F. 3d 476, 483-484 (3d Cir. 2001)); Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273; and Ingram Micro, Inc. Kalron, Inc., WIPO Case No. D2001-1252.

The Complainant cites E. & J. Gallo Winery v. Spider Webs Ltd. (62 USPQ 2d 1404 (5th Cir. 2002)) and contends that the Complainant’s present case is more compelling than Gallo because the Respondent’s website contains links to direct competitors of the Complainant.

The Complainant contends that the Respondent has no rights to the name “sol”. The name refers to the brand of beer produced by the Complainant to which it holds exclusive rights. The Respondent owns no trademark registrations related to the name, does not carry on a bona fide business under the name and is not commonly known by the name.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.

It is contended that SOL beer is so well-known in Mexico, the United States of America and world-wide that registration of the disputed domain name could only suggest opportunistic bad faith. The Complainant cites Guccio Gucci S.p.A. v.Mark O ‘Flynn, WIPO Case No. D2001-0270; The Caravan Club v. Mrgsale, NAF Case No. FA95314; America Online Inc. v. Chinese ICQ Network, WIPO Case No. D2000-0808; and Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037.

The Complainant contends that the Respondent violated paragraph [2] of the Moniker.com Domain Name Dispute Policy and the corresponding terms of the registration agreement. When it registered the domain name, the Respondent represented and warranted that:

“(a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”

Thus, it is contended, the registration of the Complainant’s well-known mark is a breach of this representation and warranty and amounts to bad faith. The Complainant cites Young Genius Software AB v. MWD, James Vargas, WIPO Case No. D2000-0591; The Sun Chronicle v. Web Solutions, Inc., NAF Case No. FA94895; Empresa Brasileira de Telecomunicaзхes S.A. - Embratel v. Kevin McCarthy, WIPO Case No. D2000-0164.

The Complainant further contends that the Respondent’s use of the Whois Identity shield to obscure and hide its true identity and contact information is evidence of bad faith. The Complainant cites Hunton & Williams v. American Distribution Systems, Inc. et. al., WIPO Case No. D2000-0501; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Symplicity Corporation v. Bob Gately, WIPO Case No. D2000-0425.

The Complainant contends that the Respondent has registered and maintains the disputed domain name in order to prevent the Complainant from using its trademarks as a domain name. On January 18, 2007, the Complainant’s counsel sent a cease, desist and transfer letter to the Respondent by certified mail. The Respondent did not reply.

The remedy requested is that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Procedural

Paragraph 4(a) of the Policy states that the Respondent is required:

“to submit to a mandatory administrative proceeding in the event that a third party (a ’complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

An initial search of the Moniker.com Whois database by the Complainant yielded an apparent registrant name of “Moniker Privacy Services”, which is known to provide a service that allows registrants to shield their identity. The registrar subsequently divulged to the Center an identity, physical and email addresses as being those of the registrant. The Registrar has confirmed that the registered owner of the disputed domain name is Traverito Traverito. Accordingly, the Panel will treat Traverito Traverito as Respondent.

A registrant may have legitimate reasons to use a privacy service or identity shield. On the other hand it may do so in an attempt to evade contact in the event of a domain name dispute (TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620).

Paragraph 2 of the Rules states that “it shall be the Provider’s responsibility to employ reasonably available means calculated to achieve actual notice to Respondent”, and specifies measures that should be taken, which essentially are to contact such physical and Internet addresses as are lodged in the registrar’s Whois database. It may further be noted that the ICANN Registrar Accreditation Agreement (2001) at paragraph 3.7.7.1 requires that “The Registered Name Holder shall provide to Registrar accurate and reliable contact details and promptly correct and update them ...”. It may reasonably be interpreted that the registrant and the registrar are expected to keep contact with each other. Nevertheless paragraph 2 of the Rules clearly anticipates difficulties in establishing contact with some Respondents.

Against this background the dispute service provider must do its best to contact the Respondent, but can do no better than to communicate with the addresses on record. It is noted that the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service. In the present case the Center has sent the Complaint to both the physical and electronic addresses provided by the Respondent, and electronically to the registrar. The tracking record of the physical package after arrival in Barcelona displays “address information needed” repetitively from June 1, 2007, until June 20, 2007, which is taken to mean that the address was not locatable, then eventually “returned to shipper”. The email record shows “transferred”. The Panel is satisfied that the Center has exercised the utmost care and has at the least fulfilled its responsibility under paragraph 2 of the Rules.

A. Identical or Confusingly Similar

The Complainant, as the trademark holding company, has produced documentary evidence of its ownership of and rights in the well established registered trademark SOL and the use of that trademark in the category, among others, of beer.

The disputed domain name is <solbeer.com>. It is well established in precedent that the gTLD identifier “.com” is of no consequence in the determination of confusing similarity. In addition, while the word “sol” (meaning sun, as deposed in its trademark registrations) is capable of various connotations, in combination with the word “beer” the disputed domain name powerfully evokes the Complainant’s trademark and business.

The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark in the terms of Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The onus is upon the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has stated a prima facie case to the effect that, as the exclusive owner of the trademark, it has never given the Respondent any authority to use its trademark and there can be no possible reason for the Respondent to have such a right. Specifically there is no evidence that the Respondent owns trademark registrations related to the name, carries on a bona fide business under the name or is commonly known by the name. The Respondent has not refuted these assertions or offered evidence of activities that correspond to any of the illustrative circumstances in Paragraph 4(c) of the Policy. The Panel finds for the Complainant under Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Panel was provided with a snapshot of the website to which the disputed domain name had resolved on May 31, 2007. The website had the headlines “Welcome to solbeer.com” and “For resources and information on Wine and Alcohol”, accompanied by a prominent photograph of a wine bottle and a glass. The website offered 11 buttons with alcohol-related labels such as “Bar” and “Bar Accessory”, and a general search engine. It may reasonably be inferred that the website has been instituted by the Respondent for the purpose of attracting visitors, and that some Internet users searching for terms such as “sol”, beer or related words would be led to the site. The style of the site is such that some users viewing it may be confused into thinking it has a bona fide relationship to the Complainant. It may reasonably be deduced that the Respondent has arranged that the buttons and internal search engine ultimately generate commission revenue by linking visitors to sites that sell goods or services related to alcohol. The Panel finds the Respondent’s activity to constitute bad faith within the terms of paragraph 4(b)(iv) of the Policy.

The illustrative circumstances provided for in paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise. A considerable jurisprudence has developed in precedent cases, supporting a finding of bad faith if, on the facts, a famous trademark has been incorporated into a domain name by a person or entity having no legitimate reason to do so and where no legitimate use of the domain name is conceivable. The Complainant cites: Guccio Gucci S.p.A. v. Mark O ‘Flynn, WIPO Case No. D2001-0270; The Caravan Club v. Mrgsale, NAF Case No. FA95314; America Online Inc. v. Chinese ICQ Network, WIPO Case No. D2000-0808; and Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037; to which may be added Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615; Sociйtй des Hфtels Mйridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849.

The Respondent’s actions in associating the word “beer” with the Complainant’s trademark SOL in the domain name, and in producing a website depicting exclusively alcohol related goods and services, constitute sufficient evidence that the Respondent must have been aware of the Complainant’s trademark. The Panel finds bad faith proven additionally on the grounds that the Respondent has registered a domain name incorporating a famous trademark, and used it in the context of the Complainant’s business without excuse.

As reproduced in section 5A above, the Respondent contracted with the registrar not to infringe upon or otherwise violate the rights of any third party, it being the Respondent’s responsibility to determine whether it was doing so. The Respondent’s failure to abide by this agreement is further evidence of bad faith.

A letter from the Complainant’s lawyers to Moniker Privacy Services requested amicably that the Respondent cease using the disputed domain name and arrange for its transfer to the Complainant. No reply was received. Failure to acknowledge or reply to a cease and desist letter may be supporting evidence of bad faith (Ebay, Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632.

7. Decision

The Panel finds the disputed domain name <solbeer.com> to be confusingly similar to the Complainant’s trademark SOL in terms of Paragraph 4(a)(i) of the Policy; that the Respondent has no rights or legitimate interests in the domain name in terms of Paragraph 4(a)(ii) of the Policy; and that the domain name was registered and is being used in bad faith in terms of Paragraph 4(a)(iii) of the Policy.

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <solbeer.com> be transferred to the Complainant.

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Dr. Clive N. A. Trotman
Sole Panelist

Dated: July 16, 2007