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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Imperio Boricua Radio Club, Inc. v. Manuel Santamarнa

Case No. D2007-0463

 

1. The Parties

Complainants are Imperio Boricua Radio Club, Inc. a non-profit corporation organized under the laws of Puerto Rico, having is principal place of business in Caguas, Puerto Rico, United States of America and Josй Hernбndez-Falcуn an individual who resides in Caguas Puerto Rico, United States of America (collectively referred to as “Complainants”), represented by Hiram A. Melйndez-Juarbe of Cyberlaw Clinic, University of Puerto Rico Law School, United States of America.

Respondents are Manuel Santamarнa who resides in Cayey, Puerto Rico, United States of America and Verуnica Montes-Delgado who resides in Aguas Buenas, Puerto Rico, United States of America (collectively referred to as “Respondents”)

2. The Domain Name and Registrar

The domain names at issue are <imperioborikua.com> and <imperioborikua.net> (the “Disputed Domain Names”). The registrar is Go Daddy Software, Inc. (the “Registrar”) located in Scottsdale, Arizona, United States of America.

3. Procedural History

On March 26, 2007, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainants via email. On March 28, 2007 the Center sent an Acknowledgment of Receipt of Complaint to Complainants. Complainants paid the required fee.

On March 28, 2007 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Disputed Domain Names and that the Disputed Domain Names are registered in the Respondents’ name.

On April 17, 2007, the Center requested hardcopy of the Complaint from Complainants. On April 23, 2007, the Center received hardcopy of the Complaint.

On April 24, 2007, the Center notified Complainants regarding deficiencies in the Complaint. On April 28, 2007, Complainants filed a submission curing the noted deficiencies.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On April 30, 2007, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondents together with copies of the Complaint, with a copy to the Complainants. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On November 14, 2000, the Center advised Respondents that they were in default for failing to file its Response. The Respondents sent several emails to the Center, but has never filed a formal Response to the Complaint.

On June 1, 2007, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of the sole Panelist.

4. Factual Background

Complainant Jose Hernбndez-Falcуn began using “Imperio Boricua” in 1983 as part of the name of a citizen’s-band (CB) radio amateur’s organization he founded (Imperio Boricua Radio Club). In 1994, Complainant Hernбndez-Falcуn registered co-Complainant Imperio Boricua Radio Club, Inc as a non-profit corporation with the Department of State of Puerto Rico.

On October 14, 2000, Respondent Manuel Santamarнa registered the <imperioboricua.com> domain name. On March 4, 2001, through ICQ, an instant messaging system, a person with call-name Bonkers, whose name correlates to the email address registered in the Whois database for “www.imperioboricua.com”, stated that he would only transfer the domain name to Complainant Imperio Boricua Radio, Club, Inc. for payment of US$10,000.

On January 24, 2005, Respondent Manuel Santamarнa registered the <imperioboricua.net> domain name. On December 6, 2005, Complainant Imperio Boricua Radio Club, Inc. filed WIPO Case No. D2005-1257 complaining that the domain names <imperioboricua.com> and <imperioboricua.net> had been registered by Respondents and were being used to promote hardcore pornography.

On December 9, 2005, only three days after the filing of said complaint Respondent Verуnica Montes-Delgado registered the domain name <imperioborikua.com> through Go Daddy Software, Inc. On February 8, 2006, a WIPO administrative panel determined that the contested domain names were confusingly similar to the trademark and service mark in which Complainant Imperio Boricua Radio Club, Inc. had rights. Based on that decision, the <imperioboricua.com> and <imperioboricua.net> domain names were transferred to Complainant Hernбndez-Falcуn in representation of Imperio Boricua Radio Club, Inc.

On March 17, 2006, shortly after the panel’s decision transferring the contested domain names, Manuel Santamarнa registered the domain name <imperioborikua.net> through Go Daddy Software, Inc. Both of the Disputed Domain Names <imperioborikua.com> and <imperioborikua.net> resolve to the same website. On October 16, 2006, Complainant Hernбndez-Falcуn registered the “Imperio Boricua” trademark with the Department of State of Puerto Rico. Respondents are currently using the <imperioborikua.com> and <imperioborikua.net> Disputed Domain Names to promote what appears to be illegal and unauthorized copying of copyrighted works, such as providing apparently pirated computer programs and links to them, providing information to circumvent copy-protect devices providing apparently pirated music and videos, and links to such files. On March 8, 2007, counsel for Complainants sent a letter to Respondent Manual Santamarнa by electronic mail to the registered address in the Whois database for the <imperioboikua.net> Disputed Domain Name, bonkerspr@hotmail.com, demanding that the <imperiorborikua.net> and <imperioboricua.com> domain names be transferred to Complainants. On March 8, 2007, counsel for Complainants sent a letter to Respondent Verуnica Montes-Delgado by electronic mail to the registered address in the Whois data base for <imperioborikua.com>, vereonicamontesdelgado@hotmail.com demanding that the <imperioborikua.com> domain name be transferred to Complainants. This message was not delivered because the mailbox for “veronicamontesdelagado” was unavailable. A copy of the undelivered letter was sent to the registered address in the Whois database for <imperioborikua.net>, bonkerspr@hotmail .com.

On March 9, 2007, counsel for Complainants sent a letter dated Mach 8, 2007, to Respondents Manuel Santamarнa by certified mail return receipt requested to the registered address in the Whois database for <imperioborikua.net>, demanding that the <imperiorborikua.net> and <imperioboricua.us> domain names be transferred to Complainants. This letter was received by Respondent Manual Santamarнa on March 12, 2007. On March 9, 2007, counsel for Complainants sent a letter, dated March 8, 2007 to Respondent Verуnica Montes-Delgado by certified mail return receipt requested, to the registered address on the Whois database for <imperioborikua.com> demanding that the <imperioborikua.com> domain name be transferred to Complainants. As of the filing of the Complaint, Respondents have not complied with Complainants’ request to transfer the Disputed Domain Names.

5. Parties’ Contentions

A. Complainant’s contentions

(i) Complainants contend that they have common law rights in the IMPERIO BORICUA name (the “Mark”). These common law rights have been previously recognized in the WIPO case entitled Imperio Boricua Radio Club, Inc. v. Imperio Boricua, WIPIO Case No. D2005-1257 which involved related Respondents.

(ii) Complainants argue that the Disputed Domain Names are confusingly similar to the IMPERIO BORICUA Mark, pursuant to Paragraph 4(a)(i) of the Policy, because the Disputed Domain Names wholly incorporate the IMPERIO BARICUA Mark with the conversion of the “c” in the phrase BORICUA to a “k” which has the same phonetic value. Complainants argue that this change is merely descriptive and does not distinguish the Disputed Domain Names from the IMPERIO BORICUA Mark.

(iii) Complainants contend that Respondents have no rights or legitimate interests in the Disputed Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondents have failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Names.

Respondents cannot demonstrate rights or legitimate interest in the Disputed Domain Names under Paragraph 4(c)(i) because they have not made use, or demonstrable preparations to use, the Disputed Domain Names in connection with the bona fide offering of goods or services.

Respondents cannot demonstrate rights or legitimate interests in the Disputed Domain Names under Paragraph 4(c)(ii) because they are not commonly known under either of the Disputed Domain Names. Respondents have no connection or affiliation with Complainants, and have not received any license or consent, express or implied, to use the IMPERIO BARICUA Mark in a domain name or in any other manner.

Respondents cannot demonstrate rights or legitimate interests in the Disputed Domain Names under Paragraph 4(c)(iii) because they are not making a legitimate noncommercial or fair use of the Disputed Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainants allege that Respondents have deliberately registered the Disputed Domain Names containing the IMPERIO BORICUA Mark with the minor alteration of changing the letter “c” to “k” and by engaging in illicit or illegal activity on the website to which the Disputed Domain Names resolve. Complainants argue that this is not a legitimate use of the Disputed Domain Names.

(iv) Complainants contend that Respondents registered and are using the Disputed Domain Names in bad faith in violation of Paragraph 4(a)(iii).

Complainants argue that the Respondents registered the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the registrations to Complainants for valuable consideration in excess of the registrant’s out-of-pocket costs. Complainants allege that the Respondents previously offered to sell the Disputed Domain Name <imperioboricua.com> to Complainants for US$10,000.

Complainants allege that the actions of the Respondents after they were notified of the Complainants’ claims provide further evidence of Respondents’ bad faith. The Respondents did not contact the Complainants or otherwise respond to the several letters from the Complainants requesting transfer of the Disputed Domain Names.

Pursuant to Paragraph 4(b) such actions further demonstrate that the Respondents has registered and used the Disputed Domain Names in bad faith consistent with paragraph 4(b) of the Policy.

Among the many allegations of bad faith offered by Complainants, they allege that Respondents have violated paragraph 4(b)(iv) of the Policy by attracting Internet users to engage in illicit and illegal commercial activities through a likelihood of confusion with Complainants’ legitimate activities.

B. Respondent’s contentions

Respondents have chosen not to formally respond to the allegations of the Complaint.

6. Discussion and Findings

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.”

Because both the Complainants and Respondents are domiciled in a jurisdiction which applies the laws of the United States and United States courts have recent experience with similar disputes. Accordingly, to the extent that it would assist the Panel in determining whether the Complainants have met their 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. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, Case No. D2000-1772 (WIPO April 10, 2001), n. 3.

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondents have failed to file a formal Response or to contest in detail Complainants’ assertions, the Panel must under the Policy review the evidence proffered by Complainants to verify whether the essential elements of the claims are met.

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

(i) 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

(ii) that the Respondent has no legitimate interests in respect of the domain name; and

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

Trademark Rights

Complainants contend that they have common law rights in the IMPERIO BORICUA Mark and that these common law rights have been previously recognized in the WIPO case entitled Imperio Baricua Radio Club, Inc. v. Imperio Baricua, D2005-1257 which involved related Respondents. Respondents in this proceeding have not formally responded to the allegations of this Complaint. Therefore, the Panel finds that for purposes of this proceeding Complainants have common law rights in the IMPERIO BARICUA Mark.

Identity or Confusing Similarity

Complainants argue that the Disputed Domain Names are confusingly similar to the IMPERIO BORICUA Mark, pursuant to Paragraph 4(a)(i) of the Policy, because the Disputed Domain Names wholly incorporate the IMPERIO BORICUA Mark with the conversion of the “c” in the phrase BORICUA to a “k” which has the same phonetic value. Complainant argues that this change is merely descriptive and does not distinguish the Disputed Domain Names.

Respondents have not contested the assertions by Complainants that the Disputed Domain Names are confusingly similar to the IMPERIO BORICUA Mark.

As courts and UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of common or generic terms in the domain name does not generally affect a finding that the domain name is identical or confusingly similar to the complainant’s trademark rights.

The Panel notes that virtually the entirety of the mark IMPERIO BORICUA Mark is included in the Disputed Domain Names and finds that changing the “c” to a “k” does not sufficiently distinguish the Disputed Domain Names of the IMPERIO BORICUA Mark. Therefore, the Panel finds that the Disputed Domain Names are confusingly similar to the IMPERIO BORICUA Mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainants contend that Respondents have no rights or legitimate interests in the Disputed Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondents have failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Names.

Paragraph 4(a)(ii) requires the complainant to prove that the respondent has no rights to or legitimate interests in the Disputed Domain Names. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondents have rights or a legitimate interest in the Disputed Domain Names:

(i) before any notice to you [Respondent] 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainants have sustained their burden of coming forward with prima facie proof that the Respondents lack rights to or legitimate interests in the Disputed Domain Names. Respondents have chosen not to rebut Complainants’ allegations regarding the elements of Policy paragraph 4(c). Therefore, the Panel finds that Respondents have no rights or legitimate interest in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainants contend that Respondents registered and are using the Disputed Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainants to show bad faith registration and use of Disputed Domain Names, including paragraph 4(b)(iv), which provides that:

(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.

Among the many allegations of bad faith offered by Complainants, they allege that Respondents have violated Paragraph 4(b)(iv) by attracting Internet users to engage in illicit and illegal commercial activities through a likelihood of confusion with Complainants’ legitimate activities. The Panel finds on the evidence provided that Complainants have shown the necessary elements of bad faith under the Policy paragraph 4(b)(iv). Therefore, the Panel finds that Respondents registered and are using the Disputed Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

 

7. Decision

The Panel concludes (a) that the Disputed Domain Names <imperioborikua.com> and <imperioborikua.net> are confusingly similar to Complainants’ common law rights in the IMPERIO BORICUA Mark, (b) that Respondents have no rights or legitimate interest in the Disputed Domain Names and (c) that Respondents registered and used the Disputed Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names be transferred to Complainants.

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Richard W. Page
Sole Panelist

Dated: June 18, 2007