plazalasamericas.com (Puerto Rico - Santo Domingo) - Transferencia del Dominio - FA0012000096181

DECISION

Plaza las Americas, Inc. v Quezada, Valenzuela & Associates

Claim Number: FA0012000096181

PARTIES

The Complainant is Plaza Las Americas, Inc., a duly organized corporation existing pursuant to the laws of the Commonwealth of Puerto Rico, having its principal place of business in San Juan, Puerto Rico, ("Complainant") represented by Eugenio Romero, Plaza Las Americas, Inc. The Respondent is Quezada, Valenzuela & Asociados S.A. an electronic commerce corporation duly organized and existing pursuant to the laws of the Dominican Republic at Santo Domingo, Republica Dominicana represented by Milquiades C. Alberto Quezada Gómez Ceo/Chairman of the Board, Quezada, Valenzuela & Asociados S.A. at Calle Central, Apto. 1B, Edif. 74, Honduras del Norte, Santo Domingo, Domincan Republic ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue, registered with Network Solutions Inc., is

plazalasamericas.com

PANEL

The Panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding. Furthermore, that the Panelist does not have any commercial, personal or any other type of relationship with any of the Parties nor the counsels to the case. Moreover that there has been no communication whatsoever with either of the Parties or the counsels to the case with the Arbitrator prior to the Decision.

Honorable Carlos Rodríguez García, as sole Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 27, 2000; The Forum received a hard copy of the Complaint on December 4, 2000. On December 18, 2000, Respondent was served electronically with a copy of the Complaint and advise of the December 18, 2000, commencement date of the case at bar.

On December 7, 2000, Network Solutions Inc., confirmed by e-mail to the Forum that the domain name:

plazalasamericas.com

is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions Service Agreement version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On December 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to the respective addresses by e-mail:

Respondent submitted a Response, which the Panelist will consider in his Decision.

Pursuant to Complainant’s request to have the dispute decided by a one member panel, the Forum appointed Honorable Carlos Rodríguez García, as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the ICANN Rules for Uniform Domain Name Resolution ("Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain names be transferred and/or registered from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant is known throughout Puerto Rico, the United States and the Caribbean as a high quality shopping center offering consumers an array of stores and providing retailers with high quality store spaces.

Furthermore, Complainants avert that they have registered a service mark containing the words "Plaza Las Americas" and logo which is looked for by consumers hoping to find information and services of Complainant’s shopping mall.

Moreover, Complainant contends that the Respondent has registered a domain name that is identical to and confusingly similar to its service mark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the Respondent has registered and is using the domain name in bad faith.

B. Respondent

Respondent contends that it is dedicated to identifying domain names comprised of generic geographic names, registering those domain names and developing Web sites to provide e-commerce services to its clients.

Furthermore, Respondents avert that the names selected for their domain name is a generic geographic name. In Spanish, Plaza refers to public market or recreational space like a "square" and Las Americas refers to their geographical area. Thus, Respondent alleges that having registered the domain name FIRST they are entitled to unquestionable right to own and use said domain name.

Moreover, Respondent recognizes that Complainant has a service mark registered from 1986 and further recognizes the logo registered by Complainant with said service mark. Nevertheless, Respondent alleges that their web site design is not similar to the Complainant’s logo therefore not confusingly similar nor identical in nature so as to cause confusion in the market area of Puerto Rico.

Additionally, Respondent asserts that they do not register domain names for re-sale nor have the intent to misleadingly divert consumers or to tarnish the service mark at issue in Puerto Rico since they are planning to formally launch this full line of service in the near future to the Dominican Republic and the world market, only.

FINDINGS

Complainant is a long-established, national company with business operations in one of the Caribbean’s largest shopping malls through which consumers from all over the world can obtain goods and services. Moreover, Complainant has a business reputation and goodwill associated with its registered service mark.

Complainant adopted, and has continuously used since that adoption, the inherently distinctive marks "Plaza Las Americas" and design marks.

Complainant holds trade and service marks, some which date back as early as 1986, with the Puerto Rico State Department for these marks.

Complainant also owns, uses and has registered domain names that include plazalasamericas.net, since 1998.

Respondent will create a very high likelihood of confusion with the Complainant’s service mark and will attract, for commercial gain, consumers from the Dominican Republic and the world to their e-commerce services. Furthermore, as of September 18, 2000, the web site was "under construction" and not in use by Respondents, assertion which Respondents averments of future formal launching support.

Moreover, Respondent is not known, is related to, or obtained a license to use the service mark registered to Complainant.

MATERIALS REVIEWED

Complainant’s Complaint and Respondents Response and their respective Exhibits.

DISCUSSION

Rule 15 prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

The Panel will operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support the contentions. See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000).

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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;

(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.

Section 4(b) provides:

Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] 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 [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the Respondent has] 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 [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.

Identical and/or Confusingly Similar

The domain names at issue consist of Complainant’s Plaza Las Americas marks in combination with the logo, a geographic term, or another generic term often used in connection with Complainant’s trademarks. See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names of "caterpillarparts.com" and "caterpillarspares.com" were found to be confusingly similar to the registered trademarks of "Caterpillar" and "Caterpillar Design" because "the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainants approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar.") See also, State Farm v. Kaufman, FA 94335 (Nat. Arb. Forum Apr. 24, 2000).. The Domain names registered under Network Solutions Inc., by the Respondent, plazalasamericas.com are confusingly similar to the trademarks registered by the Complainant. See Bank of American Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name wwwbankofamerica.com is confusingly similar to Complainant’s registered trademark "Bank of America" because it "takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet");

Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter "s" from the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the Complainant’s mark). See also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR) (finding that "kelsonmd.com" is identical or confusingly similar to Complainant’s federally registered service mark, "Kelson"). Also, Respondent’s domain name is so confusingly similar, a reasonable Internet user would assume that the Respondent’s domain name is somehow affiliated with the Complainant’s well-established mark. See Treeforms, Inc. v. Cayne Industrial Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

Thus, Complainant has satisfied paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain names in question.

Respondent has failed to prove any aspect of Policy 4(c) . Respondent is not engaged in a bona fide offering of goods and services under the Plaza Las Americas service mark or domain name, is not known by the plaza las americas name, and is not making non-commercial or fair use of the plaza las americas name.

Complainant’s contentions are well founded. Respondent is not commonly known by the domain name at issue, nor is Respondent using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Policy 4(c)(i)-(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Moreover, Respondent has asserted no rights or legitimate interests in the domain name at issue. Consequently, Respondent’s failure to show evidence sufficient to refute Complainant’s contentions, entitles the Panel to conclude that Respondent has no such rights or legitimate interests in regard to the domain name in question. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the domain names has been proved). See also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from the Complainant to use the trademarked name). Also, Respondent has failed to use, or make demonstrable preparations to use, the domain names in connection with a bona fide offering of goods or services. See Chi-Chi’s Inc. v. Restaurant Commentary, D2000-0321 (WIPO June 29, 2000) (finding that Respondent had no rights or legitimate interest in the domain name even though Respondent stated that it intended to use the domain name for "public comment" on the Internet). In fact, the web sites associated with the domain names are only ‘bookmark’ web sites, which do not provide any substantive information, and therefore do not constitute fair use or noncommercial use.

As such, the Panel concludes that the Complainant has established the elements of Policy 4(a)(ii).

Registration and Use in Bad Faith

The Complainant asserts that the Respondent registered and uses the domain names in question in bad faith. The Respondent has not denied that assertion with sufficient evidence or arguments to rebut that contention and allegation.

As a result, the Panel determines that the domain names were registered and used in bad faith.

Complainant has also shown Respondent registered the domain name intentionally attempting to create a likelihood of confusion between its domain name and Complainant’s famous mark. See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the Respondent intentionally attempted to attract Internet users to his web-site for commercial gain by creating a likelihood of confusion with the Complainant’s mark by offering the same chat services via his web-site as the Complainant). These contentions do not preclude that fact that the use of said trademarks are used for commercial gain and with the specific intention of attracting Plaza Las Americas goodwill towards Respondent.

Further, the registration of a domain name which is highly similar to Complainant’s well known Plaza Las Americas marks, combined with no good faith explanation, bolsters a finding of bad faith. See Dr. Karl Albrecht v. Eric Natale FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name).

By using the domain name plazalasamericas.com to attract Internet users in the future Respondent is creating a likelihood of consumer confusion about the source, sponsorship, affiliation or endorsement of its web site. Respondent is free to attract Internet users to its web site, but it may not use the domain name plazalasamericas.com to do so. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name statefarmnews.com in bad faith because Respondent intends to use Complainant’s marks to attract the public to the web site without permission from Complainant).

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name plazalasamericas.com be transferred from the Respondent to the Complainant.

Dated: January 25, 2001

Fuente: http://www.arb-forum.com/domains/decisions/96181.htm