WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mistic Brands, Inc. v. Jorge Reynoso
Case No. D2000-1278
1. The Parties
1.1 The Complainant is Mistic Brands, Inc. ("Mistic Brands"), a Delaware (U.S.A.) corporation with its principal place of business located at 709 Westchester Avenue, White Plains, New York 10604 U.S.A.
1.2 The Respondent is Jorge Reynoso ("Reynoso"), an individual, having an address of P.O. Box 92921, Pasadena, California 91109, USA.
2. The Domain Name and Registrar
2.1 The disputed domain name is "mistic2000.com."
2.2 The registrar of the disputed domain name is Network Solutions with a business address in Herndon, Virginia.
3. Procedural History
3.1 Complainant initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center ("WIPO") on September 27, 2000. Complainant then filed an amendment to its complaint, which was received by WIPO on October 3, 2000.
3.2 On October 19, 2000, all formal requirements for the establishment of the complaint were checked by WIPO and found to be in compliance with the ICANN 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 Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.
3.3 On October 23, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent.
3.4 On November 12, 2000, WIPO received a response to the complaint from the Respondent.
3.5 On November 20, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On November 20, 2000, the undersigned transmitted by facsimile the executed Statement and Declaration to WIPO.
3.6 On November 21, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances it would be required to forward its decision to WIPO by December 4, 2000.
The Panel has not received any further requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
4.1 Complainant Mistic Brands is the current owner of U.S. Trademark Registration 1,812,308 to the mark MISTIC for iced teas in International Class 30 and flavored sparkling water, fruit drinks and spring water in International Class 32.
4.2 Mistic Brands is the owner of the Internet domain name MISTIC.COM. Mistic Brands currently operates an active web site accessible through the domain name MISTIC.COM.
4.3 Complainant states that Respondent is not a licensee of Complainant nor is it authorized to use Complainant’s mark.
4.4 The domain name "mistic2000.com" currently resolves to an active website, which the Panel confirmed for itself.
4.5 The Network Solutions' WHOIS database indicates that Respondent registered the domain name "mistic2000.com" on May 25, 2000.
5. Parties’ Contentions
"Respondent’s domain name is identical to Complainant’s trademark."
"Complainant has used its mark in the marketplace consistently since 1989."
"Respondent has no rights or legitimate interests in respect to the domain name that is the subject of this complaint. Respondent is not a licensee of complainant nor otherwise authorized to use Complainant’s marks."
"On June 19, 2000, Complainant mailed a letter to Respondent advising that their use of the "MISTIC" mark as their domain name was unauthorized and an infringement of Complainant’s rights to the MISTIC mark."
"On or about June 30, 2000 a woman identifying herself as "Mabel" phoned the Complainant and advised she was calling on behalf of the Respondent. She advised that she would have the domain name changed within two weeks (by July 14, 2000) and would confirm in writing."
"In another attempt to settle the matter amicably, Complainant telephoned Mabel on July 26, 2000 to advise that no written communication had been received from her. Mabel claimed to have sent something to the Complainant on July 12, 2000 but it was not received by Complainant. As of September 26, 2000, Respondent has still not changed his domain name and there has been no further communication between the parties."
"As Complainant and its predecessors in title have been using the mark MISTIC on soft drinks for over a decade (See Exhibit C), and in view of Complainant’s brand identity, fame and good will in its trademark built up over years, Respondent’s domain name is likely to confuse the public as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location."
"Respondent’s domain name is identical to Complainant’s mark MISTIC and its variations thereof (the "2000" portion of the domain name being merely descriptive), and conveys substantially the same commercial impression as the Complainant’s domain name, and is so deceptively similar to Complainant’s mark as to cause confusion and lead to deception as to the sponsorship of Respondent’s goods, which are rocks with personalized zodiac sign notations on them (See Exhibit D), and reflect adversely on Complainant’s reputation."
"Complainant has spent millions of dollars over a period of years in advertising and promoting its goods under its MISTIC mark, and has accumulated millions of dollars from the goods sold under this mark. As a result, the mark MISTIC is a widely-recognized and highly respected mark in the United States and other countries and the trade and general public have come to know, recognize and identify goods with the MISTIC mark."
"The Respondent has also arbitrarily chosen to add the descriptive "2000" to his domain name which cannot be attributed to chance. Respondent’s site discusses issues of mysticism (See Exhibit E), yet Respondent specifically chose a domain name with the spelling MISTIC."
"For the record, "MISTIC" is Complainant’s coined arbitrary term with no dictionary definition. Respondent accordingly has no rights or legitimate interest in respect of the domain name. Accordingly Complainant believes that the Respondent is using the domain name in bad faith as defined in the Policy."
"[Mistic Brands] has apparently placed a noble complaint, but charged with assumptions. How can our name Misctic2000.com be identical to Mistic.com? As you can see, there is a great difference. It is like saying that George Bush and George W. Bush are identical."
"We do have legitimate interest and right in that name because we sell mystical stones with zodiac signs. We are a small business, but we have the same rights as Mistic Brands. These signs are symbols that pertain to the esoteric, mysterious and spiritual world."
"Both companies belong to different industries since ‘Mistic Brands’ commercializes beverages and ‘Mistic2000’ commercializes zodiac stones. If we speak about a legitimate interest in a name, Mistic Brands must know that a juice it is not related to mysticism, however, a zodiac sign is a mystical symbol. Therefore, what they are claiming is on incorrect grounds."
"Secondly, they claim that in the dictionary, the word is written with a ‘y’. However, it seems they are not aware that the word ‘mistic’ with an ‘i’ has a Latin origin and it does appear in the dictionary of the Royal Academy of the Spanish Language. We have rights on that word or whatever word that appears in the dictionary, just like any citizen in the world can use, abbreviate or take away a letter in form of abbreviation – like they did with ‘mistico’ and ‘mistica’."
"In Spanish ‘mistic’ is simply an abbreviation of the word ’mistica or mistico’. For example, it is like in English ‘plastic’ and in Spanish ‘plastico’, who charges who when the word is of public domain. Removing a letter from a word, is not a created word, therefore, this confirms that ‘mistic’ is neither a word nor a name created by [Mistic Brands]. It is a word found in the Spanish dictionary."
"Reference to us adding 2000 just for esthetics, they are also incorrect. The number 2000 was combined because the company was created in the year 2000. Also, we contacted the TRADEMARK office in U.S.A., and we asked if it was possible to register mistic2000.com since a company already existed with mistic.com. Their response was that if the industries are distinct, or if the products sold by each company were not the same, then there would be no problem using that name, always remembering not to use the same logo as theirs. Mistic Brands sells beverages; Mistic2000 sells zodiac stones."
"You can observe it yourself by looking into the Trademark Registered Companies web page and you will see many registered under Mistic (different endings) that are not licensed under Mistic Brands."
"However, they are putting in jeopardy the prestige and integrity of our company by stating that we are acting in bad faith trying to confuse their clients. We believe that no one can get confused between a juice and a stone, or is it that Mistic Brands does not know what they are marketing?"
"In conclusion, my web page is written more than 70% in the Spanish language. In the English dictionary, MYSTIC is written with a ‘y’ and MISTIC is found in the Spanish dictionary with an ‘I’. It is important to state that we do not spell "Mistic" with the "y" because we are Latinos and a major portion of our clientele are Hispanics. We do not put aside the public of other languages because they also have the right to mysticism (mistic). Over more, since it is a word located in the Spanish dictionary, it is of public domain."
6. Discussion and Findings
6.1 The Uniform Domain Name Dispute Resolution Policy (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
6.2 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
6.3 Complainant asserts that the domain name "mistic2000.com" is identical or confusingly similar to Complainant's federally registered trademark MISTIC.
6.4 Although the "mistic2000.com" domain name is not identical to the trademark MISTIC, a finding of similarity cannot be avoided by adding a common or generic term to the complainant’s mark. See Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO D200-0150 (WAL-MART and walmartcanada.com are confusingly similar); CSA International v. John O’Shannon and Care Tech Industries, Inc., WIPO D2000-0071 (csa-canada.com is substantially identical to and confusingly similar to CSA trademark).
6.5 The Panel finds that the "mistic2000.com" domain name is confusingly similar to the trademark MISTIC, and that the Complainant has established it has rights in the name "MISTIC" pursuant to paragraph 4(a)(i) of the Policy.
6.6 Paragraph 4(c) of the Policy lists several factors, without limitation, that if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate the registrants rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) of the Policy. In particular, paragraph 4(c)(i) states:
(i) before any notice to you 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.
6.7 It is unclear from the pleadings whether the Respondent was using or was preparing to use the domain name "mistic2000.com" in connection with the sale of rocks with personalized zodiac sign notations prior to receiving notice of this dispute. However, the Complainant's June 19, 2000 cease and desist letter to the Respondent states that "Your use of the domain name on the Internet is likely to cause confusion" and that Mistic Brands "will need your written assurances by June 30, 2000 that you will stop all use of the MISTIC2000.COM domain name." See Exhibit B to Complaint.
6.8 As the Complainant has the burden of proving the Respondent has no rights or legitimate interests in respect of the domain name, the Panel will give the Respondent the benefit of doubt and finds that the Respondent was using the domain name in connection with a bona fide offering of goods prior to receiving notice of the dispute.
6.9 The Complainant has also alleged that MISTIC is its coined arbitrary term with no dictionary definition, therefore the Respondent has no rights or legitimate interest in respect of the domain name. From a review of the U.S. Patent and Trademark Office website trademark database, the Panel notes that several active and abandoned trademark registrations exist to the mark MISTIC or marks that include MISTIC.
6.10 Several examples include U.S. Trademark Registration 1,698,300 to the mark MISTIC for factory automation apparatus and U.S. Trademark Registrations 1,468,370 and 1,493,036 to the mark MISTIC CRYSTALS for quartz crystals and related jewelry.
6.11 Although currently abandoned, U.S. Trademark Registration 743,801 to the mark MISTIC-AIR claims a date of first use in commerce of 1961, well prior to any alleged use by the Complainant. The Panel fails to see how the Complainant can claim that it coined the term MISTIC or that the term is arbitrary.
6.12 The Panel finds that the Complainant has failed to show that the Respondent does not have rights or legitimate interests in respect of the domain name "mistic2000.com," pursuant to paragraph 4(a)(ii) of the Policy.
6.13 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. From the complaint it appears, although not clearly stated, that the Complainant is alleging a violation of paragraph 4(b)(iv) which states:
(iv) by using the domain name, you 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 complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
6.14 Whether or not there is a likelihood of confusion between MISTIC and mistic2000.com is not the issue. The Complainant has failed to prove that the Respondent intentionally attempted to create a likelihood of confusion. The Panel does agree with the Respondent that the goods it offers for sale (rocks with personalized zodiac sign notations) on its website at "mistic200.com" appear to be completely unrelated to the goods offered for sale by the Complainant under the mark MISTIC (iced teas, flavored sparkling water, fruit drinks and spring water).
6.15 The Panel has considered each of the circumstances listed in Paragraph 4(b) of the Policy that shall be evidence of the registration and use of a domain name in bad faith, as well as all the evidence presented by both parties. The Panel finds that the Complainant has failed to establish that the Respondent registered and used the domain name "mistic2000.com" in bad faith.
6.16 The Panel notes that a finding of legitimate right and/or failure to prove bad faith under the Policy means only that the streamlined dispute resolution procedure is not available. Only cases of abusive registrations are intended to be subject to the streamlined dispute resolution procedure. (See "Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy," dated October 25, 1999.)
As the Complainant, Mistic Brands, Inc., has failed to establish that the Respondent, Jorge Reynoso, has engaged in abusive registration of the domain name "mistic2000.com" within the meaning of paragraph 4(a) of the Policy, the Panel denies the Complainant’s request that it transfer the domain name "mistic2000.com" from Respondent to it.
R. Eric Gaum
Dated: December 4, 2000