Complainant is Chaparro's Mexican Food, Inc. dba Alberto's Mexican Food of Vista, California, United States of America, represented by Contreras Law Firm, United States of America.
Respondent is R R of Redlands, California, United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with FastDomain, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 8, 2017. On August 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 9, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 5, 2017.
The Center appointed Richard W. Page as the sole panelist in this matter on September 13, 2017. 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
Complainant is the owner of United States of America service mark Registration No. 3,484,709 for ALBERTO'S MEXICAN FOOD (the "ALBERTO'S Mark") dated August 12, 2008 and registered for services in Class 43: Restaurant services, restaurants.
Complainant uses the ALBERTO'S Mark in conjunction with its operation of over sixty (60) Mexican fast food restaurants primarily in California, United States.
Respondent registered the Disputed Domain Name on September 30, 2009. The Disputed Domain Name resolves to a website that advertises Complainant's restaurants, as well as providing a directory of mariachi services. 5. Parties' Contentions A. Complainant
Complainant contends that the Disputed Domain Name is confusingly similar to the ALBERTO'S Mark in which Complainant has enforceable rights. Both the Disputed Domain Name and the ALBERTO'S Mark contain the word "albertos."
Complainant further contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that there is no evidence of Respondent having a legitimate interest in the name "albertos."
Complainant alleges that Respondent's website advertises Complainant's restaurants through extensive use of Complainant's ALBERTO'S Mark in clear violation of trademark infringement laws. Complainant notes that Respondent's description of Complainant's locations in the directory and Respondent's description of Complainant's food products are both inaccurate.
Complainant further alleges that the other service being advertised by Respondent on its website at the Disputed Domain Name is a "mariachi directory" called "Mariachi Plaza Directory".
Complainant further alleges that there is no evidence that Respondent (as an individual, business, or other organization) has been commonly known by the name "Albertos" or by a similar name.
Complainant argues that Respondent appears to be making unfair use of the Disputed Domain Name, with the sole intent for commercial gain, misleading diversion of consumers as well as dilution of Complainant's ALBERTO'S Mark. Respondent is also the Registrant for another domain name which is linked and heavily advertised on the website to which the Disputed Domain Name resolves. As such, it is evident that Respondent is relying on the goodwill of ALBERTO'S Mark to drive people to its mariachi website.
Complainant further argues that Respondent has registered and is using the Disputed Domain Name in bad faith. Complainant asserts that Respondent is intentionally attempting to attract for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with the ALBERTO'S Mark as to the source, sponsorship, affiliation and endorsement of Respondent's website and location, and of the services on Respondent's website and location. Moreover, it has led to consumer disruption and confusion as to the erroneous information posted as to Complainant's products. B. Respondent
Respondent did not reply to the Complainant's contentions. 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 and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Respondent is not obliged to participate in this domain name dispute proceeding, but when it fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441.
Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the ALBERTO'S Mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has a valid and subsisting registration for the ALBERTO'S Mark
Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Respondent has not contested Complainant's assertion. Therefore, the Panel finds that Complainant has enforceable rights in the ALBERTO'S Mark for purposes of this proceeding.
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the ALBERTO'S Mark under paragraph 4(a)(i) of the Policy.
The Disputed Domain Name contains the entirety of the essential element "alberto's" in the ALBERTO'S Mark, notwithstanding the absence of the apostrophe ("'") which is not possible to reproduce in a domain name.
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. Complainant argues that the entirety of the essential element of the ALBERTO'S Mark is incorporated into the Disputed Domain Name. Complainant further argues that, when a Disputed Domain Name incorporates an entire trademark with only the addition of a common word, it is still confusingly similar to the trademark as the addition of dictionary terms like "web" does not eliminate the confusing similarity. See, Hoffmann-LaRoche AG v. P Martin,WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the ALBERTO'S Mark pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Section 2.1 of the WIPO Overview of WIPO 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Policy paragraph 4(c) allows three nonexclusive criteria for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed 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 Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the ALBERTO'S Mark.
Complainant alleges that Respondent's website advertises Complainant's restaurants through extensive use of Complainant's ALBERTO'S Mark in clear violation of trademark infringement laws. Complainant notes that Respondent's description of Complainant's locations in the directory and Respondent's description of Complainant's food products are both inaccurate. Such unauthorized use of the ALBERTO'S Mark cannot constitute a bona fide offering of goods or services.
Complainant has alleged that there is no evidence Respondent has been commonly known by the name "Albertos" or by a similar name.
Complainant argues that Respondent appears to be making unfair use of the Disputed Domain Name, with the sole intent for commercial gain, misleading diversion of consumers as well as dilution of Complainant's ALBERTO'S Mark. Respondent is also the Registrant for another domain name which is linked and heavily advertised on the website to which the Disputed Domain Name resolves. As such, it is evident that Respondent is relying on the goodwill of ALBERTO'S Mark to drive people to its mariachi website.
Complainant has sustained its burden of coming forward with proof that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent has not contested Complainant's allegations and the case file contains no evidence that the use of the Disputed Domain Name meets the elements for any of the nonexclusive criteria provided for in the Policy paragraph 4(c).
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the ALBERTO'S Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent Complainant from reflecting the ALBERTO'S Mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the ALBERTO'S Mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.
Complainant argues that Respondent has registered and is using the Disputed Domain Name in bad faith. In light of the circumstances of the case, it is evident that Respondent was aware of the Complainant's rights when it registered the Disputed Domain Name.
Respondent is also the Registrant for another domain name which is linked and heavily advertised on the website to which the Disputed Domain Name resolves. As such, it is evident that Respondent is relying on the goodwill of ALBERTO'S Mark to drive people to its mariachi website.
Complainant asserts that Respondent is intentionally attempting to attract for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation and endorsement of Respondent's website and location, and of the services on Respondent's website and location. Moreover, it has likely led to consumer disruption and confusion as to the erroneous information posted as to Complainant's products.
Respondent has not contested these arguments.
Therefore, the Panel finds that Respondent has registered and used the Disputed Domain Name in bad faith pursuant to paragraph 4(b)(iv) and paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.
Richard W. Page
Sole Panelist
Date: September 25, 2017
Full & Egal Universal Law Academy