WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Varela Hermanos S.A. v. Elizabeth Strop
Case No. D2021-1452
1. The Parties
The Complainant is Varela Hermanos S.A., Panama, represented by Alfaro, Ferrer & Ramírez, Panama.
The Respondent is Elizabeth Strop, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <ronabuelo.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2021. On May 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 11, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 20, 2021. 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 Complainant is a Panamanian corporation that has been manufacturing spirit drinks, rum and other alcoholic beverages for more than 110 years. It is the owner of the following, amongst others, trademark registrations (Annexes 9-25 to the Complaint):
- Brazilian trademark registration No. 819156353 for the word mark RON ABUELO, filed on March 22, 1996, registered on November 17, 1998 and successively renewed, to cover “alcoholic beverages”;
- Panamanian trademark registration No. 223194 for the word mark RON ABUELO, registered on May 28, 2013 to cover “alcoholic beverages (except beer)”;
- European Union trademark registration No. 016690323 for the word and device mark RON ABUELO FINISH COLLECTION, registered on August 23, 2017, in International class 33; and
- United States trademark registration No. 5,291,070 for the word mark ABUELO, registered on September 19, 2017 in international class 33.
The disputed domain name <ronabuelo.com> was registered on August 10, 2000, and presently resolves to some sort of a parked webpage which states “As long time visitors to Central America, in 1989 we found the best rum, Ron Abuelo, made in Panama. Now, we can buy it in Florida”.
5. Parties’ Contentions
The Complainant asserts to manufacture rum and other alcoholic beverages having used the RON ABUELO and ABUELO trademarks for decades, having registered such trademarks or variations thereof in more than 40 countries.
According to the Complainant, the first trademark registration it obtained for its RON ABUELO trademark was the Panamanian registration No. 28520, dated May 11, 1982. The Complainant further sustains that its RON ABUELO trademark has become famous in its country of origin and considerably well-known in more than 40 countries to which it is exported (Annexes 26-37 to the Complaint), including the United States, where Respondent is located and to where the Complainant’s products have been exported since the early 1990’s.
Under the Complainant’s view, the disputed domain name reproduces its trademark in its entirety and is thus confusingly similar therewith.
Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent has not been authorized nor licensed to use and/or distribute the Complainant’s RON ABUELO AND ABUELO products in any way, nor given any permission by the Complainant to register a domain name that reproduces the Complainant’s trademark;
(ii) the Respondent affirmed not to have rights or legitimate interests in respect of the disputed domain given that she expressly stated to have “bought [the disputed domain name] to make money on it” having requested USD10,000.00 to transfer it to the Complainant (Annex 38 to the Complaint);
(iii) there is no evidence of any fair or noncommercial or bona fide use of the disputed domain name which is presently used in connection with a parked webpage with information on the Complainant’s product.
Lastly, the Complainant asserts that the bad faith of the Respondent is evident given that the Respondent was evidently aware of the Complainant’s well-known RON ABUELO trademark given the contents of the webpage that resolves from the disputed domain name and the offer to sell the disputed domain name for an amount in excess of any out-of-pocket expenses directly incurred in registering/acquiring it, having no genuine use of the disputed domain name been made.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainants:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the registered RON ABUELO trademark.
The Panel finds that the disputed domain name reproduces the Complainant’s trademark entirely and is therefore confusingly similar to it. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that the Respondent has not been authorized nor licensed to use and/or distribute the Complainant’s RON ABUELO and ABUELO products in any way, nor given any permission by the Complainant to register a domain name that reproduces the Complainant’s trademark.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name, corroborates the absence of any rights or legitimate interests in the disputed domain name.
Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation. See WIPO Overview, section 2.5.1.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
The second element of the Policy has therefore been established.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainants who are the owner of a trademark relating to the disputed domain name or to a competitor of the Complainants, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances:
(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name;
(ii) the Respondent, in its email communication with the Complainant, has indicated that the disputed domain name was bought “to make money on it”, and has offered the disputed domain name for sale for the amount of USD 10,000 which is an amount in excess of out-of-pocket costs incurred in the registration of the disputed domain name;
(iii) the well-known status of the Complainant’s trademark and the nature of the disputed domain name (reproducing the entirety of the Complainant’s trademark), along its use for a website that displays a message referring to the Complainant’s products, suggests rather a clear indication of the Respondent’s registration and holding of the disputed domain name in bad faith, with the implausibility of any good faith use to which the disputed domain name may be put; and
(iv) the indication of what appears to be false contact information not being the Center able to fully deliver correspondence to the Respondent.
For the reasons stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
The third element of the Policy has therefore been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ronabuelo.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: June 30, 2021