WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Imperio Boricua Radio Club, Inc. v. Imperio Boricua

Case No. D2005-1257

 

1. The Parties

The Complainant is Imperio Boricua Radio Club, Inc, Caguas, Puerto Rico, United States of America, represented by Ferraiuoli, Torres, Marchand y Rovira, P.S.C., United States of America.

The Respondent is Imperio Boricua, Cayey, Puerto Rico, United States of America.

 

2. The Domain Names and Registrars

The disputed domain name <imperioboricua.com> is registered with Register.com.

The disputed domain name <imperioboricua.net> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2005. On December 6, 2005, the Center transmitted by email to Register.com and to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On December 6, 2005, Go Daddy Software and on December 7, 2006, Register.com transmitted by email to the Center their 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, 2005. In accordance with the Rules, paragraph 5(a), the due date for response was January 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2006.

The Center appointed Steven Fox as the sole panelist in this matter on January 19, 2006. 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.

On January 30, 2006, the Panel issued Procedural Order requesting additional evidence to clarify Complainant’s arguments. A reply was due February 6, 2006; and, since it was duly, timely filed, it was considered.

 

4. Factual Background

The Complainant is a non-profit corporation of of Puerto Rico whose members are citizen's band radio amateurs radio amateurs. The Complainant asserts it has been using Imperio Boricua as part of its name since 1983; that it was incorporated in 1994, as “Imperio Boricua Radio Club, Inc.” and that Respondent registered <imperioboricua.com > on October 14, 2000, and <imperioboricua.net> on January 24, 2005. The Spanish term “imperio” means “empire”, and “boricua” is a colloquial expression meaning a Puerto Rican. The Complainant complains that the domain names <imperioboricua.com> and <imperioboricua.net> have been registered and are being used to promote hardcore pornography.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that its members communicate via radio transmissions, and meetings through the radio, to share stories and create bonds; that Imperio Boricua Radio Club, Inc. provides a valuable service to the community giving youngsters in Puerto Rico a medium in which to express positive ideas and opinions, and that it offers the following services: 1) weekly informative radio net, FCC and other amateur radio updates; 2) weekly informative relay chat, Internet and amateur radio updates; 3) amateur radio orientation to community entities; 4) coaching to new radio and community clubs via inter-organizational network called United Federation of Radio Amateurs Colleagues (“Federación Unida de Colegas Radio Aficionados (“FUCRA”) and Empire Federation (“Federación Imperio”); 5) support during sports events, specifically to the Caguas and Gurabo’s counties Sport and Recreation Agencies; 6) helps radio amateurs with examination to obtain an FCC license, in association with the Amateur Radio Alliance of Puerto Rico; 7) support to Caguas and Gurabo’s Civil Defense (State Emergency Management Agency) during hurricane seasons and emergencies.

The Complainant alleges that the Respondent’s use of <imperioboricua.com> and <imperioboricua.net> to promote and advertise pornographic materials severely tarnishes the Complainant’s reputation.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Since the Respondent has not submitted a response, the Panel accepts as true all the factual contentions made by the Complainant in accordance with the Rules, paragraph 5(e): “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.”

Even though there has been no response the Panel must determine that the Complainant has show that each of the criteria in the Policy, paragraph 4(a) has been met. Furthermore, paragraph 15(a) of the Rules requires a panel to make its decision “in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires Complainant to show that “The domain name is identical or confusingly similar to the trademark and service mark in which the Complainant has rights.” It is now settled that this language does not limit the application of the Policy to a registered trademark or service mark.

The Complainant cites General Electric Company v. Resolution Diagnostics, WIPO Case No. D2005-0878 and cases cited therein, for the proposition that a trade name is a sufficient equivalent to a trademark and service mark. The Panel disagrees with this proposition. The Panel reads the said decision to state that since a trade name can also be used as a trademark and/or service mark, the Panel must look at the evidence of how the tradename is used. If the evidence shows that the tradename is also used as a mark, then common law trademark rights arise in the name, and those trademark rights in the name provide the subject-matter jurisdictional basis for a Complaint under the Policy.

Applying that analysis to the case at hand, Complainant has not registered the name Imperio Boricua as a trademark, therefore the question arises whether the name at issue has been “used in commerce,” 15 U.S.C. §1051, as defined in the Lanham Act to identify the Complainant (or an unknown entity) as the source of particular services. “The term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade, … (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.” 15 U.S.C. §1127.

Complainant’s initial evidence, its Certificate of Corporate Registration and the newspaper articles, Complaint Annexes 1 and 2, shows that it has used “Imperio” and “Boricua” as the name of an unincorporated association, and as a non-profit corporation, and that third-parties refer to it by that name. The Panel is not persuaded that a third-party’s use of a name to refer to a juridical person is evidence of use of that person’s name as a mark. (Paragraph 10(d) of the Rules provide that the Panel determine the admissibility, relevance, materiality and weight of the evidence.) The news articles are not “displayed in the sale or advertising of services.” Nor does a Certificate of Corporate Registration indicate any services are actually rendered or advertised.

Evidence which Complainant submitted in Response to Procedural Order does contain documents in which the term Imperio Boricua is used in connection with “the sale or advertising of services.” For example, the Rule Book, Annex 3 of Response, carries the IMPERIO BORICUA mark, and describes services of teaching proper radio etiquette. While the Panel would prefer a brochure describing the benefits of joining the club, or an agenda showing topics of information conveyed to members during a meeting, the lack of a response from the Respondent plus the accumulated evidence tend to show that services are provided under the IMPERIO BORICUA mark.

Having concluded that the Complainant has rights to a service mark, it is easy to conclude that the domain names <imperioboricua.com> <imperioboricua.net> are identical to the service mark IMPERIO BORICUA because they are.

Accordingly, the Panel concludes that the Complainant has satisfied the first element under Paragraph 4(a)(i) in the present case.

B. Rights or Legitimate Interests

Respondent did not reply; thus, the record has no evidence to support a finding that Respondent has rights or legitimate interests in the domain names. Based on the case file, it seems that neither of the following three examples met in this case:

(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; or

(ii) you (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 are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Accordingly, the Panel concludes that the Complainant has satisfied the second element under Paragraph 4(a)(ii) in the present case.

C. Registered and Used in Bad Faith

The fact that the Respondent is now passively holding the domain names is evidence of bad faith. Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (doing nothing with a domain name, “passive holding”, may amount to bad faith registration and use). As concisely expressed in the Telstra Decision, “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.” Ibidem, at paragraph 7.9. The Respondent’s failure to provide any reply on the question of use is also a significant factor.

In light of the above the Panel is satisfied that the Respondent has registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

 

7. Decision

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 names, <imperioboricua.com> <imperioboricua.net> be transferred to the Complainant.


Steven Fox
Sole Panelist

Dated: February 8, 2006