WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Federation of Coffee Growers of Colombia v. Daniel Harrison
Case No. D2002-1134
1. The Parties
The Complainant is National Federation of Coffee Growers of Colombia, C/O Luis Fernando Samper, President of the Colombian Coffee Federation, Inc., Calle 73, Number 8-13, Santafé de Bogotá, Colombia, represented by Dewey Ballantine, LLP of United States of America.
The Respondent is Daniel Harrison of Henderson, Nevada, United States of America.
Complainant mentions that Mr. Stephen Schmidt is also a Respondent, for he was once listed as billing contact for the contested domain name. Mr. Daniel Harrison alleges that he has sold the domain name to Mr. Schmidt, at one point in time. However, on the date when this decision is being rendered, the Whois database regarding the disputed domain name shows that Mr. Daniel Harrison is the Registrant as well as the Technical and Administrative contact in connection to the said domain name. No mention is made to Mr. Schmidt. Complainant has provided a printout of a Whois Query dated October 29, 2002, wherein no mention is made to Mr. Schmidt either. According to the Service Agreement of the Registrar of the disputed domain name, i.e. Network Solutions, Inc. (see point 2 infra), the administrative contact is the registrantís agent with full authority to act on his or her behalf (see Paragraph 1 of the Agreement at "http://www.networksolutions.com/en_US/legal/static-service-agreement.jhtml"). It is mentioned in Schedule A, Paragraph 3 of the said Agreement that domain names may be transferred, subject to certain procedures and conditions found at "https://www.networksolutions.com/en_US/name-it/rnca-transfer.jhtml" and incorporated in such agreement by reference. Mr. Harrison knew or should have known of these requirements, since they are mentioned in the Service Agreement executed by him. He did not comply with such requirements (in the Response, Mr. Harrison mentions that he only changed Mr. Schmidt to the billing contact Ėsee Response at 5); otherwise, Mr. Schmidt would be referred to as the domain name Registrant in the Whois database. Therefore, the disputed domain name has not been transferred to Mr. Schmidt. He has not been appointed Administrative Contact for this domain. This Panel finds that the only Respondent is Mr. Harrison.
2. The Domain Name and Registrar
The disputed domain name <juanvaldez.org> is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 13, 2002, in electronic form, followed by a hardcopy which was received in the Center on December 18, 2002. On December 13, 2002, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On December 17, 2002, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, 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 the Respondent of the Complaint, and the proceedings commenced on December 19, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2003. The Response was filed with the Center on January 6, 2003.
The Center appointed Kiyoshi I. Tsuru as the sole Panelist in this matter on January 14, 2003. 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 owns US trademark registration No. 866,500 for JUAN VALDEZ, covering COFFEE in international class 30, which was registered on March 11, 1969, and US trademark registration No.1,266,492 for a triangular design depicting a coffee grower and burro with a mountain in the background, covering COFFEE in international class 30, was registered on Feb 7, 1984.
The contested domain name was registered on July 7, 1999.
5. Partiesí Contentions
Complainant states that it is an entity created by the Republic of Colombia in 1927, to protect the legal and economic interests of coffee growers in Colombia; that it is authorized to use coffee export fees to fund promotional efforts in the United States and elsewhere, conduct scientific research concerning coffee farming and production, assist rural Colombian coffee growers through health programs, education centers and financial assistance and protect Colombian farmers by establishing markets for their products through the purchase and sale of coffee from Colombia. That over the last two decades Complainant has invested in excess of $200 million worldwide in connection with its advertising and marketing activities.
Complainant further states that the fictitious character Juan Valdez was created in 1959, by the advertising agency Doyle Dane Bernbach to promote Colombian coffee. That the said character was intended to symbolize and personify the Colombian coffee farmers.
Complainant asserts that the trademark JUAN VALDEZ has been used in commerce since as early as March 6, 1960; that this trademark was registered in the US on March 11, 1969 (Reg. No. 866,500), in International Class 30. Evidence of the existence of this trademark registration was attached to the Complaint. According to Complainant, the same trademark has also been registered in other jurisdictions.
Complainant argues that the likeness of Juan Valdez has been an integral part of the Federationís logo (a triangular design depicting a coffee grower and a burro with a mountain in the background) since its introduction in 1981, which has been registered as a trademark in the US since 1984 (Reg. No. 1,266,492), as well as in other countries. Complainant affirms that Juan Valdez has appeared in commercials and promotional advertisements.
Complainant states that it operates a website at "www.juanvaldez.com" and another one at "www.juanvaldez.net."
Complainant further states that as a result of its use of the JUAN VALDEZ trademarks, such trademarks have become uniquely associated with Complainant and identify Complainantís goods and services, as well as those of its licensees, to the consuming public. Complainant also asserts that the JUAN VALDEZ trademarks have become famous according to US legislation.
Complainant argues that Respondentís domain name incorporates in its entirety the JUAN VALDEZ trademark and that Complainant has longstanding rights in the mark.
Complainant alleges that Respondent registered the Domain Name without license or permission from the Federation for use of the JUAN VALDEZ trademark.
Complainant states that upon information and belief, it first learned of the disputed domain name registration in July 1999.
Complainant manifests that it sent two cease and desist letters to Respondent; that Respondent replied to Complainantís attorneys by e-mail on October 5, 1999, wherein Respondent claimed that his intended use of the disputed domain name was "a security website using the name <juanvaldez.org>," which "had nothing to do with coffee or the National Federation of Coffee Growers of Colombia."
Complainant alleges that Respondent was reluctant to give up the name because that had been the nickname I had gone by for over eight years nowÖbut I am sure that some sort of arrangement could be made.
Complainant claims to have sent a letter to Respondent on October 13, 1999, asking for a proposal regarding such an agreement. According to Complainant, Respondent replied via email on October 18, 1999, stating that he had done some research into what .org domain names are currently going for; that he had found that the fair market value for .org domain names falls somewhere in between $60,000 and $100,000 U.S. dollars.
Complainant states that upon information and belief, on July 10, 2001, Respondent Harrison renewed the registration for the disputed domain name.
Complainant argues that Respondent registered the contested domain name for the purpose of selling it to Complainant or to someone else for valuable consideration in excess of his out-of-pocket costs directly related to the domain name.
Respondent argues that Complainantís trademark covers the words Juan Valdez, not juanvaldez and certainly not <juanvaldez.org>.
Respondent asserts that he understands that Complainantís mark and the disputed domain name are similar and if the web site was advertising, for example; coffee, there would be a definite case of dilution. Respondent asserts that [t]his however is not the case.
Respondent states that the original purpose of him registering the disputed name was to create a non-profit website, emphasizing the following: non-profit was extremely important to me since this was a .org name and thus has to be a non-profit according to the rules outlined in the original RFCís. The site, according to Respondent would be devoted to computer security. Respondent declares that he has spent the last 3 years looking for content and developing what the site will contain; that this research has included running honeypot networks and performing forensic analysis on systems that have been broken into; that the compilation of material is at a state where a site could be developed but after being contacted about this I had decided to wait and see what happened with this dispute. Respondent adds: I have witnessís who can provide confirmation of this although the timeframe for the response does not allow me to collect written statements, considering this arrived in my hands on Christmas Day.
Respondent explains the reason why he chose this domain name: I happened to decide on the name juanvaldez.org because in High School and after I had been known by the nick name Juan Valdez. I had and still have several email addressís and accounts scattered across the world that are identified by the name juanvaldez (or in some cases valdezjuan, it appears that this is a common nym used on the internet). I also have witnessís who can verify that this was and still is a common nick name for me.
Respondent claims that he had no intention of selling the name until he was contacted by the Federation; that this contact was a threat about taking him to court over the contested domain.
Respondent states that he was short of money and sold the website to Mr. Schmidt, who agreed to buy it to help him out; that it has just come to his attention that by selling the website to Mr. Schmidt and changing him to the billing contact in the Network Solutions database does not transfer ownership to Mr. Schmidt, as was his intent. That he has a signed and notarized document where he states that his intent was to sell the website to Mr. Schmidt and the dollar amount for the purchase. That he did not renew the disputed domain name registration, as claimed by Respondent. That he believes it was Mr. Schmidt that renewed this.
Respondent concluded with the following remarks: I would like to make it very clear, this website was not registered to sell for more than my "out-of-pocket costs" nor was my intent to even sell the website in the first place. I was approached by the attorneyís representing the Federation, not the other way around.
C. Procedural Order No. 1
On January 20, 2003, this Panel issued Procedural Order No. 1 to request that Respondent provide the following documents:
1. Evidence showing that Respondent has been commonly known by the name Juan Valdez. [see Response, Paragraph III. B; see Uniform Domain Name Dispute Resolution Policy (the Policy), Paragraph 4c(ii)].
2. Evidence showing that Respondent has made demonstrable preparations to use the domain name <juanvaldez.org> in connection with a bona fide website devoted to computer security. It is not clear to this Panel why a computer security site (and its content), which was allegedly to be originated in the U.S., is to be located under the name Juan Valdez.
Respondent was notified absent exceptional circumstances, he was required to send his reply to this Procedural Order to the Center by January 29, 2003.
On January 29, 2003, Respondent requested an extension of time to gather the required evidence.
On that same day, the Center advised Respondent that this Panel agreed to a term extension. The deadline was moved to February 3, 2003.
On February 3, 2003, Respondent sent his reply to the Center. Respondentís reply comprised the testimonies transcribed hereinbelow, as well as an extensive list of files which according to Respondent were intended to constitute the content of the site to which the contested domain name would resolve.
I have known Daniel Harrison since 1992. During that time, I recognized multiple people would refer to him by the nickname "Juan Valdez" at varioustimes. The manner in which they referred to him led me expect that the nickname was used prior to my meeting him.
To my knowledge, it was most prevalently used in the time of 1992-1993.
However, since 1993 I have lived in a different geographic area from Daniel and haven't had as much direct access to him. Despite that, when I have been in his company, I have referred to him by multiple pseudonyms including "Juan Valdez."
I have known my husband since 1994 and during that time I have heard himself and others call him by a number of various nick names. One of those nick names is Juan Valdez. He used to run around all the time mumbling "I am Juan Valdez and this is my trusty goat," people would respond that the pictures always showed Juan Valdez with a donkey and he would whisper that the donkey was really a goat in disguise. He has a habit and a history of doing things that are goofy and 'silly'. One year he even dressed as Juan Valdez for Halloween.
To whom it may concern:
I met Daniel Harrison in November 1999 when I first interviewed for a technical position with Vegas.com. I began working at Vegas.com as a member of the same team with Daniel at the beginning of January 2000. We used to discuss our user names for our many web activities. He went by the nickname 'juanvaldez' and I went by the name 'shecanfixit'. Now I use 'hotwiredbitch', 'shecanfixit' and 'shecanfilmit' for my online presence. I have always found Daniel to be honest and ethical, and often ask him for help with my online security issues.
Here is my contact information if you would have any further questions of me, or would like me to attest to Daniel's character:
To whom it may concern:
I have known Daniel Harrison since 1991. In that time, I have known Dan to use the pseudonym "Juan Valdez," primarily in social situations where he may not have wanted people to know his real name.
Please feel free to contact me if you have any questions.
On February 3, 2003, Complainant requested an opportunity to comment on Respondentís evidence. In accordance with Paragraph 10b) of the Rules, the Panel allowed Complainant to do so, setting February 7, 2003, as deadline for providing such comments. Complainantís reply was filed on the fixed deadline. Complainant alleges that Respondent failed to come forward with any legitimate defense; that minor spacing and capitalization differences, plus the addition of the suffix "org" to the contested domain name are trivial and thus irrelevant when analyzing whether such domain is identical or confusingly similar to Complainantís trademark JUAN VALDEZ. Complainant also argues that neither having a small group of friends and relatives referring to Complainant as "Juan Valdez" nor dressing like Complainantís own trademark protected character provide Respondent any legitimate interests in the contested domain name, that to the contrary, Respondentís dressing up like Complainantís famous trademark character confirms his bad faith effort to capitalize on the Complainantís investment and goodwill. Complainant also argues that Respondent failed to submit any verifiable or credible evidence of any legitimate efforts to develop the "computer security" based website that was purportedly to be featured on the disputed domain name. That the list of files provided by Respondent falls far short of the required showing; that Respondent provides virtually no explanation of what the voluminous list represents or where the list was generated from; that Respondent produced no evidence of any work he did to interpret, assemble, organize or prepare the data for use on the website; that in sum, calling oneself "Juan Valdez," dressing like the trademark protected famous character, and accumulating a list of files and documents does not entitle Respondent to any interests in the contested domain name.
Complainant additionally alleges that Respondent failed to squarely address the evidence Complainant presented demonstrating the bad faith motive behind Respondentís registration of the domain name. Complainant again refers to Respondentís statement that the fair market value for .org domain names falls somewhere between $60,000 and $100,000 U.S. Dollars. That in Complainantís opinion the bad faith element does not turn on which party initiates a dispute over the rights to a domain name, but rather by the words and deeds of the party who registered it.
6. Discussion and Findings
In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:
(i) the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each three of these elements are present.
A. Identical or Confusingly Similar
This Panel finds that the disputed domain name <juanvaldez.org> is identical to Complainantís registered trademark JUAN VALDEZ. The only discrepancies between the former and the latter, i.e., the elimination of a space between the words JUAN and VALDEZ (which cannot be reproduced in the domain name anyway), as well as the addition of the generic top-level domain (gTLD) ".org" to the contested domain name are without legal significance. See CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834, September 4, 2000. See also Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, December 4, 2000 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, June 13, 2000; J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035, March 23, 2000).
Thus, Complainant has complied with the first requirement of the Policy.
B. Rights or Legitimate Interests
Respondent argues that he has rights or legitimate interests to the contested domain name as [he] had been known by the nick name Juan Valdez.
Respondent has provided some testimonies showing that he has been known by the pseudonym JUAN VALDEZ. However, the testimony of Ms. Tracy Harrison, Respondentís wife shows that Respondent used the nick name JUAN VALDEZ based on Complainantís character: He used to run around all the time mumbling "I am Juan Valdez and this is my trusty goat," people would respond that the pictures always showed Juan Valdez with a donkey and he would whisper that the donkey was really a goat in disguise. He has a habit and a history of doing things that are goofy and 'silly'. One year he even dressed as Juan Valdez for Halloween.
This Panel finds that the term "the pictures" refers to the promotional materials used by Complainant, always depicting the fictitious character JUAN VALDEZ, a Colombian coffee grower with his donkey. Such advertisements seem to have been familiar to Respondent and those surrounding him. The reference made by Respondent regarding such donkey confirms the presumption that Respondent had knowledge of the existence of Complainantís protected character. Dressing as Juan Valdez for Halloween [emphasis added] also confirms Respondentís intention to make reference to Complainantís character.
Thus, it is the view of this Panel that Respondentís nick name was modeled after the fictitious character created by instructions of Complainant. Considering that the creation and promotion of such character precedes Respondentís reported use of the pseudonym JUAN VALDEZ, and considering that JUAN VALDEZ has been registered as a trademark since as early as 1969, this Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
On the other hand, Respondentís list of files relating to computer security applications do not show how the disputed domain name was to be used in connection with a bona fide offering of goods and services.
The second requirement set forth in the Policy has thus been fulfilled.
C. Registered and Used in Bad Faith
Given Complainantís continuous use of the mark JUAN VALDEZ in commerce since 1960, the considerable amount of resources invested in the advertisement of such mark and Complainantís efforts to sell coffee under the trademark JUAN VALDEZ, Respondent knew or should have known of the existence of the said trademark. The testimonies filed by Respondent confirm the fact that he knew about the existence of Complainantís fictitious character JUAN VALDEZ. This leads the Panel to conclude that the contested domain name was registered in bad faith.
Complainant has provided evidence of a message sent by Respondent to Complainant on October 18, 1999. The message comprises, inter alia, the following statement: I have found that the fair market value for .org domain names falls somewhere in between $60,000 and $100,000 U.S. dollars. The existence of this message or the contents thereof have not been contested by Respondent. In the opinion of this Panel, even when Respondent was firstly approached by Complainant, the foregoing phrase contains an offer made by Respondent to transfer the domain name in exchange for a monetary consideration. The amount mentioned in such message exceeds Respondentís out-of-pocket costs directly related to the domain name (Policy, Paragraph 4b)i). Precedents created under the Policy establish that such an offer constitutes use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000), (citing in turn Panavision International, L.P. v. Dennis Toeppen, et al., 141 F.3d 1316 (9th Cir. 1998). See also Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044, March 16, 2000; Jordan Grand Prix Ltd. v. Gerry Sweeney, WIPO Case No. D2000-0233, May 11, 2000; Capcom Co. Ltd. and Capcom U.S.A. Inc. v. Dan Walker trading as "Namesale," WIPO Case No. D2000-0200, May 1, 2000.
The third requirement of the Policy has been therefore fulfilled.
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 <juanvaldez.org> be transferred to the Complainant.
Kiyoshi I. Tsuru
Dated: February 17, 2003