Complainant is La Mafafa, Inc., doing business as (dba) Cultura Profética, Puerto Rico, Unincorporated Territory of the United States of America, represented by Cyberlaw Clinic of University of Puerto Rico Law School, United States of America.
Respondent is Domains Real Estate, c/o L. Rodriguez, Florida, United States of America.
The disputed domain name <culturaprofetica.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2009. On April 23, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 23, 2009, 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. The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2009. The Response was filed with the Center on May 21, 2009.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 27, 2009. 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.
Following its initial review of the file in this matter the Panel by email through the Center on June 19, 2009 issued Administrative Order No. 1 requesting from Complainant evidence of the relationship between the group of musicians doing business as Cultura Profética, on one hand, and La Mafafa, Inc., on the other, so as to adequately establish an ownership link between Complainant and the claimed trademark and service mark. Complainant furnished such evidence by supplemental submission dated June 22, 2009.
Complainant, La Mafafa, Inc., is a corporation organized in 2005 in Puerto Rico to conduct the business of a group of musicians doing business as “Cultura Profética”. Two members of the group of musicians, Eliut Gonzalez Bermudez and Omar Silva, serve respectively as president and treasurer of the corporation. The Merchants' Certificate of Registration (i.e., “Certificado de Registro de Comerciante”) on file with the Puerto Rico Secretary of State shows the legal name (i.e., “Nombre Legal”) of the business as “La Mafafa, Inc.” and the corresponding dba or local name (i.e., “Nombre Locale”) as “Cultura Profética”.1 “Complainant” shall hereinafter be understood to refer to the group of musicians doing business as “Cultura Profética” through the corporation “La Mafafa, Inc.”.
Complainant has submitted an application for registration of the trademark and service mark CULTURA PROFÉTICA with the Department of State of the Commonwealth of Puerto Rico, dated September 23, 2008, with amendment on June 22, 2009. That application is pending.
Complainant's first performance as a group of musicians took place in May 1996. Complainant has since performed extensively in Puerto Rico, in venues in several states of the United States (including Florida), and in venues in other countries (most notably throughout Latin America). Complainant has produced six phonograms/record albums since 1998, and numerous copies of those albums have been sold in the United States and other countries. Complainant has performed to large audiences in the United States and countries of Latin America. Complainant has provided an extensive collection of news reports and promotional materials concerning the musical output of the group of musicians known as “CULTURA PROFÉTICA”, including substantial evidence that the work of the group is widely known among the public interested in what is described as a unique fusion of musical styles, including reggae, jazz, salsa and others. There is substantial evidence that the musical group continues to actively perform (see, e.g., “Cultura Profética en festival dedicado a Bob Marley”, Feb. 14, 2008, “www.primerahora.com”).
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that report, the record of registration of the disputed domain name was created on July 13, 2001. According to that report, the disputed domain name “was registered to this registrant Sept 28, 2005”.
Respondent has asserted but provided no evidence that he is the representative of an author researching and writing a book “about religion, prophecy, culture and how they influence one another”. He asserts that the disputed domain name was registered by his unidentified client in 2001.
Respondent has registered as domain names the names of several musical groups based in Puerto Rico (<grupomania.com>, <limite21.com>, <premiostumusica.com>, as well as the trademarks of a popular soft drink brewed in the Caribbean, <maltaindia.com>, a cooperative that services the financial needs of the Teachers Association of Puerto Rico (<educoop.com>), and the name of a well-known bakery in Puerto Rico (<ricominibakery.com>). Complainant has provided WHOIS database records showing such registrations in the name of Respondent, as well as computer printouts of trademark registrations with the Secretary of State of Puerto Rico for a number of those names. Respondent has listed each of those domain names for sale, requesting a minimum offer of USD500. The email address of Respondent and his telephone number as furnished in this proceeding also appear on the web pages on which he offers the aforesaid domain names for sale.
The disputed domain name is currently directed to a Godaddy.com parking page that provides sponsored links to various music services that are not specifically associated with Complainant (e.g., “www.GospelMusicChannel.com”).
Complainant first contacted the then registrant of the disputed domain name in 2001 in an effort to secure the disputed domain name. Respondent states that his client did not wish to sell the disputed domain name at that time, but might have considered an offer of five thousand dollars. Complainant again contacted Domain Real Estate in February 2008. Respondent again indicated that his client might consider an offer for USD5,000, rejecting Complainant's offer to pay the five hundred dollar price for the disputed domain name apparently offered on the domain name's “for sale” webpage. Complainant thereafter transmitted a cease and desist transfer demand to Respondent.
The Registration Agreement in effect between Respondent and GoDaddy.com, Inc., subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Complainant alleges that it has common law rights in the trademark and service mark CULTURA PROFÉTICA based on long use in commerce and the inherently distinctive characteristic of the mark. Regarding trademark and service mark characteristics, Complainant argues that the alleged mark has achieved a level of recognition by the public sufficient to establish secondary meaning.
Complainant asserts that the disputed domain name is identical to its trademark.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name because (a) Respondent has not been commonly known by the disputed domain name, (b) Respondent has not made a bona fide offering of goods or services under the disputed domain name, and (c) Respondent is using the disputed domain name to misleadingly divert consumers for commercial gain.
Complainant states that Respondent registered and has used the disputed domain name in bad faith because he registered it with the intent to sell it to Complainant for valuable consideration in excess of costs directly associated with the domain name. Complainant argues that Respondent registered the disputed domain name to prevent Complainant from registering its trademark and service mark as a domain name, and that Respondent has engaged in a practice of registering the trademarks of third parties as domain names. Complainant finally argues that Respondent registered and is using the disputed domain name to misleadingly divert Internet users to his website for commercial gain.
Complainant requests the Panel to direct the registrar to transfer the disputed domain name to Complainant.
Respondent argues that Complainant does not have a valid trademark registration in Puerto Rico. Respondent further argues that even assuming Complainant has a valid trademark registration in Puerto Rico, such registration is not valid in Florida or any other jurisdiction in the United States, and that no trademark application has been filed with the United States Patent and Trademark Office (USPTO).
Respondent alleges that Complainant is not an existing corporation.
Respondent argues that his client registered the disputed domain name in 2001 in connection with a book he is researching and writing and that his client eventually wishes to use the domain name in connection with a forum for discussion and a promotional tool.
Respondent argues that his client did not register the disputed domain name with the intention to sell it, and that his offer to sell it for USD5,000 was made only in response to a request from Complainant. Respondent alleges that he is in the business of registering domain names for clients who plan to develop websites.
Respondent requests the Panel to reject Complainant's demand for transfer.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent received notice of the Complaint and commencement of the administrative proceeding from the Center and filed his Response in a timely manner. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.
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 use, 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has alleged rights in the trademark and service mark CULTURA PROFÉTICA. Complainant's evidence of rights includes a number of references to trademark registration applications filed with the Office of the Secretary of State of the Commonwealth of Puerto Rico. Registration based on those applications has not yet been granted. This submission of an application for registration of the trademark does not establish rights in a trademark. The Panel notes that Complainant has not in any event established what the legal effect of trademark registration in Puerto Rico would be from the standpoint of this proceeding.
Complainant asserts common law rights to the trademark and service mark CULTURA PROFÉTICA in connection with the provision of services in the form of musical performances and the related marketing of recordings.2 Complainant has not specifically identified the geographic area for which such trademark rights are claimed. However, Complainant has provided substantial evidence that it has used the trademark and service mark extensively in connection with musical performances within the Commonwealth of Puerto Rico, as well as using the mark in connection with performances within the continental United States, and in connection with the promotion and sale of recordings in Puerto Rico, the continental United States and in other countries.
Complainant has argued that the term CULTURA PROFÉTICA is inherently distinctive.3 Complainant has not indicated whether the fact that the terms are in the Spanish language should make a difference in assessing the inherent distinctiveness of the mark.4 Complainant appears to assume that the Panel should assess the combination term using its ordinary English-translation meaning, “prophetic culture”. In this sense, the Panel does not find a direct descriptive correlation between the terms “prophetic culture” and a musical group. At a minimum, some imagination must be exercised to make a connection between the combination of terms and a group of performing musicians. With that established, the combination of terms is at least suggestive, and therefore inherently distinctive.5 The Panel need not determine whether the combination of terms may also be arbitrary or fanciful. That the combination term in Spanish might not generally be recognized by English-language consumers within the continental United States may further strengthen a claim of inherent distinctiveness as a matter of U.S. law, but that complex issue need not be addressed further here.
Complainant clearly has made fairly extensive use of the term CULTURA PROFÉTICA in commerce in the Commonwealth of Puerto Rico and in the continental United States through its numerous performances, promotion and sale of recordings. Complainant has succeeded in crossing the threshold for use in commerce of a common-law trademark in the United States.6
Respondent has argued that Complainant's trademark rights, if any, in the Commonwealth of Puerto Rico do not extend to the continental United States.
Because of the unique legal status of the Commonwealth of Puerto Rico within and under the federal law of the United States, the Panel might have benefited from some guidance by Complainant with respect to the treatment of common law trademarks within the territory of Puerto Rico under U.S. federal law, or under the law of the Commonwealth of Puerto Rico, should that treatment be different. Nonetheless, the Panel understands that federal law of the United States generally applies in the Commonwealth of Puerto Rico,7 and does not find grounds to distinguish Complainant's common law trademark claim on grounds that its use of CULTURA PROFÉTICA has taken place both in the territory of the Commonwealth of Puerto Rico and in the territory of the continental United States. Were it necessary to make finding on this point, the Panel is satisfied that Complainant would establish common law trademark and service mark rights within the continental United States, and particularly within Florida (based, inter alia, on its performances within that state).
Complainant has established common law trademark and service mark rights in the combination term CULTURA PROFÉTICA.
The disputed domain name is identical to Complainant's service mark, with the exception of elimination of an accent mark and addition of the generic top-level domain identifier (gTLD) “.com”. These differences are not material from the standpoint of the Policy. The Panel finds that the disputed domain name is identical to Complainant's trademark and service mark within the meaning of the Policy.
Complainant has established rights in the trademark and service mark CULTURA PROFÉTICA, and that the disputed domain name is identical to that mark.
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.” (Policy, paragraph 4(c)”
Respondent has not provided evidence that he has been commonly known by the disputed domain name, or that he has made or planned to make a bona fide offer of goods or services using that name. Although Respondent states that he has acted on behalf of a client who plans to research, write and publish a book on a subject matter arguably described by the disputed domain name, Respondent has provided no evidence of the existence of the client or of the planned publication. Such self-serving statements do not establish preparations for a bona fide offering of goods or services under the disputed domain name, particularly in the context of Respondent's practice of registering and offering for sale other domain names incorporating trademarks of third parties (see Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000).
The placement of the disputed domain name on a standard form Registrar's parking page does not in itself represent a use of the domain name that legitimizes registration by establishing legitimate noncommercial or fair use.8 In the instant proceeding, the Registrar's parking page is providing advertising and links to third-party providers of services and goods competitive with those of Complainant. Respondent is presumably receiving some financial benefit from the Registrar's parking page use of his domain name. But even if Respondent is not receiving financial benefit, he is responsible for the commercial use by the Registrar acting on his behalf. Respondent is taking advantage of the goodwill associated with Complainant's mark to offer services and goods of third parties, including competitors of Complainant. This does not constitute a bona fide offering of services or goods within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139; Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368, and Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881.
The Panel finds that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include “(i) circumstances indicating that [the respondent] ha[s] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name”; “(ii) [respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; and (iv) “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website 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 [respondent's] website or location or of a product or service on your website or location”.
Respondent registered the distinctive trademark and service mark of Complainant in the disputed domain name, and he has offered to sell it to Complainant at a price well in excess of any reasonable expenses directly associated with the domain name. Respondent has offered no plausible good faith explanation for registering the disputed domain name. Respondent is presently offering for sale other domain names that incorporate trademarks of third parties. The Panel determines that Respondent registered the disputed domain name with the bad faith intention to sell it within the meaning of Paragraph 4(b)(i) of the Policy.
Complainant has provided substantial evidence that Respondent registered several domain names that are similar to trademarks of third parties (see Factual Background, supra). This indicates that Respondent has engaged in a pattern of registering the trademarks of third parties in order to prevent them from registering corresponding domain names, within the meaning of paragraph 4(b)(ii) of the Policy.
Furthermore, Respondent has used the disputed domain name, which is identical to Complainant's inherently distinctive trademark and service mark, for the purpose of intentionally attracting for commercial gain Internet users to Respondent's website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent's website. Respondent is presumably receiving some form of direct or indirect compensation from the Registrar for click-throughs to third party competitors listed on the parking page. Respondent is in any event responsible for activities undertaken by the Registrar on his behalf. Such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of the Policy.
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, <culturaprofetica.com>, be transferred to Complainant.
Frederick M. Abbott
Dated: July 1, 2009
1 The official language of this proceeding is English. Understandably, much of the evidence furnished by Complainant (e.g., press clippings) is in Spanish. The Panel is sufficiently proficient in Spanish to understand and translate the relevant documents provided by Complainant, supplementing and/or confirming translations provided by Complainant. Translations in the body of the decision are made or confirmed by the Panel.
2 The Panel notes that Section 43(a) of Lanham Act, 15 U.S.C. §1125(a) provides the basis of federal common law trademark rights in the United States.
3 Federal common law involves a two-part inquiry: (1) does a term qualify as a trademark, and (2) has it been used in commerce?
4 Unregistered marks are assessed in the same manner as registered marks (see Two Pesos v. Taco Cabana, 505 U.S. 763 (1992)).
5 This preceding does not involve a claim of trademark or service mark rights in the personal name of an entertainer which would necessitate a different analysis (see, e.g, Charles Rapier v. Dark Moon Management, WIPO Case No. D2004-0221).
6 Compare Lucent Information Management v. Lucent Technologies, 186 F3d 311 (3d Cir. 1999) (adopting a “market penetration” analysis, but see dissent arguing market penetration is principally relevant in assessing territorial scope of common law rights) and Allard Enterprises v. Advanced Programming, 146 F. 3d 350 (6th Cir. 1998) (requires genuine use in commerce, but shows ownership “even if the first uses are not extensive and do not result in deep market penetration or widespread recognition”. Further consistent and continuous commercial utilization should follow, even if in not high volume.)
7 48 USC §734.
8 The Registrar is advertising third-party products and services, either on its own to behalf or on behalf of Respondent. The use is therefore not “noncommercial”. The use does not fall within the legitimizing category of “fair use” because it does not involve comparative advertising, nominative fair use or generic use. Nor does it serve another generally accepted purpose for which a third party may make fair use of a trademark. Assuming the absence of links to third-party goods and services, the placement of a domain name on a Registrar's standard form parking page does not in itself constitute bad faith use of a domain name, but neither does it establish rights or legitimate interests in a domain name. See Dicota GmbH v. Linus Tan, WIPO Case No. D2009-0435.