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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Federacion Nacional de Cafeteros de Colombia v. Buen Dia
Case No. D2007-0092
1. The Parties
The Complainant is Federacion Nacional de Cafeteros de Colombia, of Bogota, Colombia, , represented by Triana, Uribe & Michelsen, Colombia.
The Respondent is Buen Dia Products, of Panama.
2. The Domain Name and Registrar
The disputed domain name <buen-dia.com> is registered with GoDaddy.com,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on January 25, 2007 and in hardcopy on February 1, 2007. On January 29, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On January 29, 2007 GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2007.
The Center appointed Manoel J. Pereira dos Santos
as the sole panelist in this matter on March 9, 2007. 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 trademark upon which the Complaint is based is BUENDIA. According to the evidence on record, Complainant owns a number of trademark registrations for the BUENDIA trademark around the world, including the U.S. Trademark Registration No. 1,115,742 issued on March 27, 1979 and renewed on August 12, 1999; the Panamanian Trademark Registration No. 19983 issued on September 10, 1975 and renewed on September 10, 2005; and the Colombian Trademark Registrations Nos. 86539 issued on June 5, 1990, 255051 issued on May 22, 2002, and 83908 issued on June 19, 1989.
According to the documentary evidence and contentions submitted, Complainant is a non-profit organization certified on February 28, 1997 by the Ministry of Agriculture of the Republic of Colombia and registered before the Chamber of Commerce of Bogota, Republic of Colombia, on March 5, 1997. Complainant is the administrator of the Fondo Nacional del Cafй (National Coffee Fund), and is devoted primarily to the orientation, organization, promotion and regulation of the Colombian coffee. Reference is made to Exhibit A of the Complaint.
According to the contentions submitted, BUENDIA coffee is a 100% Colombian Freeze-Dried Coffee which is commercialized in several markets and was created in the early 70’s by Complainant. Complainant offers a great variety of BUENDIA products.
According to the evidence on record, Complainant owns a number of domain names registrations, including <buendia.com>, registered with BulkRegister, LLC and created on March 6, 2001, and <buendiacoffee.com>, and created on August 21, 2000. An independent survey was conducted by the Panel and the Panel has found that these domain names resolve to Complainant’s website, which contains information on the BUENDIA products.
According to the evidence, Respondent registered the
domain name <buen-dia.com> with to GoDaddy.com, Inc. on June 22, 2005.
On March 6, 2006 Complainant sent a cease and desist letter to Respondent’s
registrar, Domains by Proxy, part of the GoDaddy.com group, requiring the transfer
of the disputed domain name. On March 20, 2006,Domains by Proxy advised that
they had requested that their customer contact Complainant by March 25, 2006
to resolve the issue. On April 3, 2006, Complainant sent a cease and desist
letter to Respondent requiring the transfer of the disputed domain name.. On
April 6, 2006 Respondent replied to this letter and requested the sum of US$
5,000 as reimbursement of cost to transfer the domain name. Complainant states
that after lengthy negotiations Complainant and Respondent reached a verbal
agreement wherein Respondent would receive the sum of US$ 2,000 in exchange
for transferring the domain name to Complainant, but that Respondent eventually
decided not to sell the domain name to Complainant.
5. Parties’ Contentions
Complainant contends that the domain name <buen-dia.com> is based upon and wholly incorporates the BUENDIA trademark and is, therefore, confusingly similar, if not identical, to Complainant’s trademarks. It further argues that the inclusion of a dash in the BUENDIA trademark does not modify the grammatical, phonetical, visual, or ideological elements of the Complainant’s trademark, and that the suffix “.com” corresponds to the top-level domain, which cannot be appropriated by any registrant.
Complainant further contends that, although Respondent is identified under the name BUEN DIA PRODUCTS, Respondent operates in areas of activity which are covered by the classes where the Complainant has trademark protection. For that reason, the Panamanian Trademark Office accepted Complainant’s opposition to a trademark application filed by Respondent for a BUENDIA trademark, and denied the registration of the Respondent’s trademark application.
Complainant further argues that Respondent has no rights or legitimate interest in the domain name <buen-dia.com> because: (i) Respondent has no intellectual property rights in the expression BUENDIA since Complainant has prior rights in the BUENDIA trademark; (ii) Respondent does not have any relationship with either Complainant or its BUENDIA products, and the domain name <buen-dia.com> does not offer any services related to the BUENDIA products; (iii) Respondent was aware of the existence of Complainant’s trademark and registered the domain name <buen-dia> with the intention of creating a risk of confusion between the BUENDIA trademark and the domain name <buen-dia>, and (iv) Respondent is intentionally misleading the public and creating confusion with the purpose of selling its advertisements and eventually selling or transferring its domain name to Complainant in exchange for a monetary compensation.
Complainant further contends that bad faith of Respondent in registering and using the disputed domain name results from the following elements: (i) Respondent has no prior right to the expression BUENDIA; (ii) Respondent knew of the existence of Complainant and of its BUENDIA trademark; (iii) the domain name BUEN-DIA was created to divert Internet users who look for the website of the Complainant. Complainant also argues that (i) bad faith exists when there is intent to sell, rent, or transfer a disputed domain name; (ii) Respondent was willing to negotiate and demanded a sum in excess of out-of-pocket costs in exchange for transferring the disputed domain name; and (iii) Respondent showed opportunistic bad faith because the domain name at issue relates to products that Complainant commercializes.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that the respondent’s default does not automatically
result in a decision in favor of the complainant and that the complainant must
establish each of the three elements required by paragraph 4(a) of the UDRP
Overview of WIPO Panel Views on Selected UDRP Questions, para.
2.2). Paragraph 14(b) of the Rules provides that, in the absence of exceptional
circumstances, a panel shall draw such inferences as it considers appropriate
from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances
for the failure of the Respondent to submit a Response. As a result, the Panel
infers that the Respondent does not deny the facts asserted and contentions
made by Complainants from these facts. Reuters Limited v. Global Net 2000,
Inc., WIPO Case No. D2000-0441; LCIA
(London Court of International Arbitration) v. Wellsbuck Corporation, WIPO
Case No. D2005-0084; and Ross-Simons, Inc. v. Domain.Contac, WIPO
Case No. D2003-0994. Therefore, asserted facts that are not unreasonable
will be taken as true and Respondent will be subject to the Panel’s findings
that flow naturally from the information provided by Complainant. Reuters
Limited v. Global Net 2000, Inc., WIPO
Case No. D2000-0441; RX America, LLC v. Matthew Smith, WIPO
Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
A. Identical or Confusingly Similar
This Panel concurs with the opinion of several prior WIPO UDRP panels which
have held that, when a domain name wholly incorporates a complainant's registered
mark, that is sufficient to establish confusing similarity for purposes of the
Policy. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO
Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood
S. Wilson, Sr., WIPO Case No. D2000-1525;
Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises,
Inc., WIPO Case No. D2000-0047; Bayerische
Motoren Werke AG v. bmwcar.com, WIPO Case
In fact, the similarity between the trademark BUENDIA and the domain name <buen-dia.com>
is obvious. The addition of a hyphen is not sufficient to distinguish the Complainant’s
trademark from the domain name, particularly because the expression “buendia”
is composed of two words (“buen dia” or “good day”).
See Deutsche Telekom AG v. Dexcom Holdings B.V., WIPO
Case No. DTV2006-0001 (holding that the domain names <tmobile.tv>
and <tmobil.tv> are at least confusingly similar to complainant’s
T-MOBILE and T-MOBIL); Sociйtй de Huk-Coburg Haftpflicht-Untertutzungs-Kasse
Kraftfahrender Beamter Deutschlands A.G. v. Domibot, WIPO
Case No. D2006-0439 (holding that the domain name <hukcoburg.com>
is confusingly similar to the trademark HUK-COBURG).
Also, the addition of the suffix “.com” is non-distinctive because
it is required for the registration of the domain name. RX America, LLC v.
Mattew Smith, WIPO Case No. D2005-0540;
Sanofi-Aventis v. US Online Pharmacies, WIPO
Case No. D2006-0582. In the disputed domain name it is clear that
the registered trademark BUENDIA is distinctive and would cause the public to
think that the disputed domain name is somehow connected to the owner of the
registered trademark. Utensilerie Associate S.p.A. v. C & M, WIPO
Case No. D2003-0159.
As a result, the Panel concludes that the domain name <buen-dia.com> is confusingly similar to the trademark BUENDIA in which Complainant has rights, because: (i) Complainant’s trademark BUENDIA is included in its entirety in the disputed domain name; and (ii) the addition of a hyphen and the suffix “.com” is not sufficient to distinguish the domain name at issue from Complainant’s trademark.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
This Panel accepts Complainant’s contention that, although Respondent is identified under the name BUEN DIA PRODUCTS, this does not grant Respondent rights or legitimate interests in the domain name. The Panel notes that Respondent, through the website to which the domain name <buen-dia.com> resolves, operates in areas of activity which are covered by the classes where the Complainant has trademark protection. Furthermore, the Panamanian Trademark Office denied the registration of the Respondent’s trademark application for BUENDIA. Therefore, this Panel does not find that the Respondent’s corporate name gives it rights or legitimate interests in the domain name at issue.
The Panel also finds that: (i) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services: (ii) Respondent certainly knew of the existence of Complainant’s trademark when it registered the domain name <buen-dia> because the evidence establishes that the Complainant has substantial recognition in the coffee and related-products market: and (iii) Respondent is clearly misleading the consumer public and creating confusion with the purpose of obtaining economic gain.
The Panel finds that the Complainant has satisfied
its burden of providing sufficient evidence to show that Respondent lacks rights
to or legitimate interests in the disputed domain name. It has been established
by previous WIPO UDRP decisions that, “while the overall burden of proof
rests with the complainant, the burden of proof shifts to the respondent where
the complainant establishes a prima facie case showing lack of rights and legitimate
interests of the respondent to the disputed domain name”. Caixa DґEstalvis
I Pensions de Barcelona v. Young N, WIPO
Case No. D2006-0406; Croatia Airlines dd v. Modern Empires Internet
Ltd., WIPO Case No. D2003-0455.
The Respondent has failed to provide the Panel with
any of the types of evidence set forth in paragraph 4(c) of the Policy from
which the Panel might conclude that Respondent has any rights or legitimate
interests in the disputed domain name. Berlitz Investment Corp. v. Stefan
Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
It is very unlikely that Respondent would have registered <buen-dia.com> unless Respondent would have known (i) of the existence of the domain name <buendia.com> and of the trademark BUENDIA, and (ii) that the domain name at issue would generate some type of economic benefit. In fact, it is conceivable that someone seeking to register a domain name would first ascertain whether or not there are similar domain names previously registered. Therefore, Respondent could easily have known of Complainant’s trademarks and domain names.
This Panel concurs with previous WIPO UDRP decisions holding that registration
of a well-known trademark as a domain name is a clear indication of bad faith
in itself, even without considering other elements. As decided before, “knowledge
of a corresponding mark at the time of registration of the domain name suggests
bad faith”. Caixa DґEstalvis I Pensions de Barcelona (“La Caixa”)
v. Eric Adam, WIPO Case No. D2006-0464;
Reuters Limited v. Global Net 2000, Inc., WIPO
Case No. D2000-0441.
The fact that Respondent has formed the domain name
<buen-dia.com> by only adding a hyphen suggests that the combination was
made in bad faith with the intent to exploit user confusion as to source of,
sponsorship by, affiliation with, or endorsement by Complainant. This conclusion
is reinforced by the circumstance that the disputed domain name resolves to
a website where coffee and other food products are offered. An independent survey
was conducted by the Panel by visiting <buen-dia.com> website and the
Panel has found that links to coffee and food-related products are displayed
on the home page. This is evidence of opportunistic bad faith. See Pivotal
Corporation v. Discovery Street Trading Co. Ltd., WIPO
Case No. D2000-0648 (“The Panel is also of the opinion that the Domain
Name is obviously connected with the Complainant, its products and services.
Therefore, the Panel finds that its use by someone with no connection with the
Complainant supports a finding of opportunistic bad faith”).
The Panel also finds that the fact that Respondent requested US$ 5,000 to transfer
the domain name during settlement negotiations initiated by Complainant is additional
evidence of bad faith. As already decided, “[t]he fact that it is the
Complainant who first approached the Respondent seeking transfer of the Domain
Name does not preclude the Panel from coming to this conclusion. Cases abound
in which bad faith registration and use has been found in circumstances where
it was the Complainant who made the first approach (see for example SembCorp
Industries Limited v. Hu Huan Xin (WIPO
Case No. D2001-1092))”. McMullan Bros., Limited, Maxol Limited,
Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct
(NI) Limited v. Web Names Ltd., WIPO Case
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the
Policy is met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <buen-dia.com> be transferred to the Complainant.
Manoel J. Pereira dos Santos
Date: March 23, 2007