The Complainant is CARACOLITO S SAS, Colombia, represented by CMS Rodriguez Azuero, Colombia.
The Respondent is Nelson Brown, OXM.CO, Cayman Islands, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2020. On February 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 20, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 20, 2020. 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” 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 the Respondent of the Complaint, and the proceedings commenced on March 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on April 1, 2020. 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 The Complainant, a company founded and based in Bogota, Colombia, has been in existence for 30 years, during which time it has been dedicated to the manufacture and sale of high-quality school uniforms. Today, the Complainant manufactures uniforms for sale in Colombia, the United States of America (“United States”) and the Bahamas. The Complainant owns the word and design mark CARACOLITO’S, Colombia Registration No. 368802, for dresses, footwear, hats and uniforms in international class 25, registered with the Republic of Colombia’s Superintendency of Commerce and Industry on June 27, 2008 (the “CARACOLITO’S Mark”). The Complainant owns the domain names The Disputed Domain Names The Complainant sent a cease-and-desist letter to the Registrar on January 20, 2020. 1 The Complainant did not receive a reply. 5. Parties’ Contentions A. Complainant The Complainant contends that: - the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and - the Disputed Domain Names were registered and are being used in bad faith. The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Names transferred from the Respondent to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i)-(iii)): (i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) The Disputed Domain Names were registered and are being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Names are confusingly similar to the CARACOLITO’S Mark. It is uncontroverted that the Complainant has established rights in the CARACOLITO’S Mark based on its years of use as well as its registered trademark for the CARACOLITO’S Mark in Colombia. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the CARACOLITO’S Mark. The Disputed Domain Name The Disputed Domain Name Moreover, the addition of a gTLD such as “.com” or a ccTLD such as “.co” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Names. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s CARACOLITO’S Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names. Further, the Respondent’s unauthorized registration and use of the Disputed Domain Names to create a website containing pornographic images does not constitute a bona fide offering of goods or services or noncommercial fair use under the Policy. Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), the respondent cannot be reasonably found to have made a bona fide offering of goods or services. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Names. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Names pursuant to paragraph 4(b) of the Policy. Most significantly, the Panel finds that the Respondent registered and used the Disputed Domain Names in bad faith because it did so for the sole purpose of diverting users to the website “www.vidz.com” containing pornographic content. This use of the Disputed Domain Names not only prevented the Complainant from using the trademark in corresponding domain names, but may also have tarnished the Complainant’s CARACOLITO’S Mark for being used in association with adult-oriented content. See Microsoft Corporation v. Party Night, Inc. d/b/a Peter Carrington,WIPO Case No. D2003-0501. Accordingly, the Panel finds that the Respondent attempted to commercially benefit off the Complainant’s mark in bad faith under Policy paragraph 4(b)(iv). Second, under the circumstances of this case, the Respondent’s registration of the Disputed Domain Names that are confusingly similar to the Complainant’s trademark is suggestive of bad faith registration and use. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Moreover, the use of a domain name to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s CARACOLITO’S Mark and to drive Internet traffic seeking the Complainant’s goods to the Respondent’s pornographic website for commercial gain. Thus, the Panel concludes that the Respondent registered and is using the Disputed Domain Names in bad faith to target the Complainant’s CARACOLITO’S Mark. Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 5 of the Rules, the Panel orders that the Disputed Domain Names Lynda M. Braun 1 The letter was sent to the Registrar because at that time, the WhoIs results did not list the Respondent as the registrant.
Sole Panelist
Date: April 15, 2020
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