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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sun Pacific Marketing Coop, Inc. v. Arnold Li

Case No. D2000-1744

 

1. The Parties

1.1 The Complainant is Sun Pacific Marketing Coop, Inc., a corporation organized under the laws of the State of California, United States of America, having its principal place of business at 1601 East Olympic Boulevard, Suite 105, Los Angeles, California, United States of America.

1.2 The Respondent is Arnold Li, an individual having an address at 1278 East Colorado Boulevard, Pasadena, California, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <sunpacific.com>, which domain name is registered with Register.com, based in New York, New York, United States of America.

 

3. Procedural History

3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on December 20, 2000, and the signed original together with four copies was received on December 14, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated December 19, 2000. The Complaint as originally filed named Neil Hao dba Infofactory as the Respondent. The Complainant obtained the identity of the Respondent from a Whois lookup of the domain name at issue.

3.2 On December 19, 2000, a Request for Registrar Verification was transmitted to the registrar, Register.com requesting it to: (1) confirm that the domain name at in issue is registered with Register.com; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.

3.3 On December 27, 2000, Register.com replied by facsimile that the domain name is registered with Register.com and is currently in active status, but that the current registrant of the name is Arnold Li. The Registrar indicated that the registrant had apparently changed the contact information in the Whois directory.

3.4 On January 9, 2001, the WIPO Center informed the Complainant of the correct identity of the Respondent, and requested that the Complaint be amended to identify the proper Respondent and be served upon the proper Respondent.

3.5 On January 30, 2001, the WIPO Center received in electronic form the Amended Complaint, and on February 1, 2001, the WIPO Center received the requisite number of executed hard copies thereof.

3.6 The WIPO Center determined that the Amended Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.

3.7 No further formal deficiencies having been recorded, on February 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Register.com and ICANN), setting a deadline of

February 25, 2001, by which the Respondent could file a Response to the Amended Complaint. The Commencement Notification was transmitted to the Respondent to the address indicated in Annex 1A to the Amended Complaint and furnished by Register.com. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

3.8 On February 28, 2001, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.

3.9 On March 19, 2001, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.

 

4. Factual Background

4.1 Complainant registered the mark "SUN PACIFIC" as part of a "design plus words and letters" in connection with fresh citrus fruit with the United States Patent Office ("USPTO") on August 5, 1995. The application for registration was filed on July 1, 1994. Amended Complaint, Annex 3.

4.2 Complainant has used the SUN PACIFIC mark for twenty years in the marketing of various produce products, including oranges, tomatoes, grapes and kiwis. The products are placed in bags, cartons and boxes that carry the SUN PACIFIC mark.

4.3 Complainant has used the mark extensively such that it has become well known, especially in the State of California.

4.4 On January 10, 2000, Respondent registered the domain name <sunpacific.com>.

4.5 On September 5, 2000, Complainant wrote Neil Hao, the individual identified in the Whois lookup as the registrant and notified Mr. Hao of Complainant's rights in the mark and requested that the use of the domain name cease. Thereafter banner advertising was placed on the web site to which the domain name at issue resolves that redirects visitors to other web sites.

 

5. Parties’ Contentions

5.1 Complainant contends that Respondent has registered a domain name which is identical or confusingly similar to the mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

5.2 Respondent has not contested the allegations of the Amended Complaint.

 

6. Discussion and Findings

6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that 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) that the Respondent has no rights or legitimate interests in respect of the domain name; and,

3) that the domain name has been registered and is being used in bad faith.

6.4 It is clear that the domain name at issue <sunpacific.com> is identical to the mark in which the Complainant has rights.

6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.

6.6 Complainant's allegations fail to come within any of the four examples of bad faith registration and use set out in Paragraph 4(b) of the Policy.

6.7 However, the examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

6.8 In Telstra it was established that "inaction" can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No. D2000-0086; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.

6.9 Telstra established that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.

6.10 In this case, the Panel finds that where (1) the mark is one that is widely known in California, where Respondent purportedly resides, and was widely known at the time Respondent registered the domain name at issue; (2) Respondent apparently changed the Whois contact information, giving the name and address of someone who was not the authorized registrant of the name; (3) someone responded to a letter from Complainant addressed to the individual identified in the Whois lookup by altering the web site to include banner advertising with directions to other commercial web sites; and (4) Respondent failed to Respond to the Amended Complaint at issue or to deny any of its allegations, Respondent's inaction constitutes bad faith registration and use of the domain name at issue.

 

7. Decision

For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4,i of the Policy, the Panel requires that the registration of the domain name <sunpacific.com> be transferred to the Complainant.

 

 

M. Scott Donahey
Sole Panelist

Dated: March 30, 2001