WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dean & Simmons, Sàrl and Heintz Van Landewyck S.à.r.l. v. Domain Capital / Moniker Privacy Services

Case No. D2015-0080

1. The Parties

The Complainants are Dean & Simmons, Sàrl and Heintz Van Landewyck S.à.r.l., Luxembourg, represented by Office Freylinger S.A., Luxembourg.

The Respondent is Domain Capital of Englewood, New Jersey, United States of America/ Moniker Privacy Services of Fort Lauderdale, Florida, United States of America, represented by John Berryhill, Ph.d. esq., United States of America.

2. The Domain Name and Registrar

The disputed domain name <fiesta.com> is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2015. On January 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name differing from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 23, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 26, 2015.

The Center verified that the amended 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced January 29, 2015. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 18, 2015. The Response was filed with the Center on February 18, 2015.

The Center appointed Brigitte Joppich, Louis-Bernard Buchman and Richard G. Lyon as panelists in this matter on March 20, 2015. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

4. Factual Background

The Complainants belong to the “Heintz van Landewyck” group of companies and both own registered trademark rights in FIESTA, mainly in connection with tobacco products, electronic cigarettes, and vaporizers, in numerous countries worldwide, inter alia through Benelux trademark registration no. 0054646 FIESTA, registered on April 5, 1973, Community trademark registration no. 005566311 FIESTA, registered on December 7, 2007, International trademark registration no. 829218 FIESTA, registered on April 8, 2004, and International trademark registration no. 1217538 FIESTA, registered on May 5, 2014 (hereinafter referred to as the “FIESTA Marks”). The Complainants offer e-cigarettes online at “www.fiesta-ecig.com”.

The disputed domain name was acquired by the Respondent in 2008 and is used in connection with a website which provides pay per click advertising links to third parties’ websites.

5. Parties’ Contentions

A. Complainants

The Complainants contend that each of the three requirements specified in paragraph 4(a) of the Policy is met in the present case.

(1) The Complainants state that the disputed domain name is identical to the very well-known FIESTA Marks, which the Complainants have used in connection with tobacco products, as it contains such marks in their entirety and as the generic Top Level Domain name does not affect the domain name for the purpose of determining identity or confusing similarity. The Complainants further argue that the public has come to perceive the products offered under the FIESTA Marks as being those offered by the Complainants and would reasonably assume that a domain name such as the disputed domain name would be owned by the Complainants.

(2) The Complainants argue that the Respondent has no rights or legitimate interests in the disputed domain name as it is not affiliated with the Complainants in any way, as it has not been authorized by the Complainants to register and use the FIESTA Marks or to seek registration of any domain name incorporating such marks, as it has no prior rights or legitimate interests in the disputed domain name, and as the use of the disputed domain name in connection with a pay per click (“PPC”) website with advertising links to third parties’ websites is neither noncommercial nor fair.

(3) The Complainants finally contend that the disputed domain name was registered and is being used in bad faith. They argue that the disputed domain name was primarily registered for the purpose of selling it to the Complainants under paragraph 4(b)(i) of the Policy, as the website available at the disputed domain name contains the information that the “domain name may be available for sale” and as the Respondent asked for a price “well into six figures”. Furthermore, the Complainants state that the Respondent also registered the disputed domain name in order to prevent the Complainants from reflecting their FIESTA Marks in a corresponding domain name, as the disputed domain name is used in connection with a pay per click website, and as the Respondents Moniker Privacy Services and Domain Capital both have engaged in a long pattern of such conduct and are known as cybersquatters. The Complainants finally argue that the Respondent has also intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with the Complainants as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

B. Respondent

The Response was filed in the name of the underlying registrant of the disputed domain name, Domain Capital, which denies the Complainants’ contentions.

It argues that the disputed domain name is the Spanish word for “party”, that the Complainants’ FIESTA Marks are disused for tobacco products, and that the Complainants are planning to give them a new purpose by using them for a new product, namely electronic cigarettes, unrelated to the trademark registrations cited in the Complaint. The Respondent further contends that the Complainants do not allege the dictionary-word domain name to have ever been used in any manner relevant to the goods claimed by the Complainants in connection with the FIESTA Marks.

With regard to the three elements specified in paragraph 4(a) of the Policy, the Respondent argues as follows:

(1) The Respondent states that the Complaint presents a raft of trademark registration records, only one of which actually pre-dates the registration of the disputed domain name, and that the bulk of application records cited in the Complaint came into existence in 2013 and 2014, i.e., long after registration and use of the disputed domain name by the Respondent. It further questions whether the Complainants’ FIESTA Marks have ever been used in connection with tobacco products and finds that the only “FIESTA” tobacco products actually sold are cigarettes in Mexico and Uruguay – where neither of the Complainants enjoys rights. The Respondent states that the Complainants’ domain name <fiesta-ecig.com> used in connection with the Complainants’ new products (which in fact are not tobacco products) was registered in September 2013.

(2) With regard to the Respondent’s own rights or legitimate interests in the disputed domain name, the Respondent contends that the word “fiesta” is Spanish for “party” and that such word is not uniquely, exclusively, or even famously associated with the Complainants, as, in the United States alone, the word “FIESTA” is the subject of some 354 pending and issued trademark registration applications. It further argues that, absent infringement of the Complainants’ FIESTA Marks, the Respondent is entitled to use the disputed domain name for any purpose it desires, that the Complainants’ rights, even if taken as alleged, do not extend to enjoin anyone, including the Respondent, from using the common dictionary word “fiesta”, and that the Complainants expressly admit that the Respondent's use of the domain name has nothing to do with the Complainants.

(3) Finally, the Respondent contends that the disputed domain name was neither registered nor used in bad faith. It states that the disputed domain name corresponds to a popular and common word in the Spanish language and that such domain names have inherent commercial value. The Respondent states that it is in the business of providing leaseback financing for premium domain names and that the disputed domain name is one of ten domain names which one of its clients transferred to the Respondent in order to secure a payback agreement in the amount of 175,000 USD. The Respondent states that the Complainant's principal allegation of bad faith is that the Respondent refused the Complainants’ anonymous offer of 1,000 EUR, and that such refusal constitutes some sort of bad faith intent in relation to a trademark owner in tobacco products. It argues that the Respondent’s registration and use of the disputed domain name does not constitute bad faith under the Policy, as the Complainants provide no explanation of how refusing an offer of 1,000 EUR in 2014 constitutes a primary purpose of selling the domain name to the Complainants when obtaining the registration in 2008, that the Complainants did not make it clear that their anonymous purchase offer was to be understood by the Respondent as a solicitation coming from a trade or service mark claimant (or its competitor), and that there is no principle under the UDRP forcing a domain name registrant to accept an anonymous 1,000 EUR offer, especially not for a domain name used to secure a loan of 175,000 USD. The Respondent finally argues that the Complainants did not provide evidence that the disputed domain name was registered in bad faith and that for pay per click use of a domain name to constitute bad faith it has been held consistently that such use must trade on the trade or service mark right of the party making the complaint. The Complainants, however, make no allegation that the disputed domain name is or has ever been used in connection with “tobacco products” of any kind.

In addition, the Respondent argues that the disputed domain name has been registered by various parties since 2001 and that the Complainants have so far never claimed any “disruption” of their business. It claims that the Complaint is a fraud.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainants must prove that each of the following three elements is present:

(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.

A. Consolidation of proceedings

The Panel concludes that it is appropriate and efficient to permit the consolidation in this proceeding of the two Complainants, mainly because they belong to the same group of companies and have a common interest in the proceeding.

B. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainants’ FIESTA Marks and is identical to such marks. It is well established that the generic Top Level Domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). With regard to paragraph 4(a)(i) of the Policy, a complainant must not necessarily provide any additional evidence with regard to the actual use of the trademark, on which the complaint is based, or establish prior rights, i.e. trademark rights predating the registration date of the disputed domain name.

Therefore, the Panel finds the Complainants satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

In the light of the Panel’s finding below (see section 6.D. below) it is not necessary for the Panel to come to a decision in this regard.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the Respondent has registered or acquired the disputed 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; 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 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 the Respondent’s website or location or of a product or service on its website or location.

With regard to bad faith registration, having carefully considered the facts contained in the case file, the Panel finds that the Complainants did not provide sufficient evidence with regard to the Respondent’s actual knowledge of the Complainants’ trademark rights at the moment of time when the Respondent acquired the disputed domain name and that, therefore, the Complainants failed to meet their burden of proof in this regard.

It appears that the Respondent acquired the disputed domain name as part of a leaseback financing deal concluded with the previous owner of the disputed domain name before knowledge of the present dispute. Such deal was most likely based on the potential value of the disputed domain name, which is comprised of a common generic Spanish word. In addition, the Respondent provided evidence that the term “fiesta” is used by several third parties in connection with their respective products. The Complainants, which bear the burden of proof, in turn, furnished no evidence that the FIESTA Marks were well known anywhere in the world, let alone in the United States (the Respondent’s home country) in 2008 when the Respondent acquired the disputed domain name. Moreover, the Complainants failed to provide evidence with regard to publicity of the FIESTA Marks and to the extent of their business activities in the United States. Finally, the Complainants did not provide any evidence that the Respondent targeted the Complainants or the FIESTA Marks at any time.

Under these circumstances, the Panel is not convinced that the Respondent must have been aware of the Complainants at the time of the acquisition of the disputed domain name and that the disputed domain name was registered in bad faith.

Accordingly, the Panel concludes that the third requirement of the Policy has not been established. The Complaint must therefore fail.

E. Reverse Domain Name Hijacking

The majority of the Panel declines a finding that the Complainants engaged in reverse domain name hijacking. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Moreover, paragraph 15(e) of the Rules provides as follows: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” As highlighted, amongst others, in Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279 (citing Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309) “[a]llegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy” (see also Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). Not every denied complaint automatically leads in a finding of reverse domain name hijacking.

In the present case, the Complainants own registered trademarks for FIESTA registered as early as 1973, the Respondent was using the disputed domain name in connection with a standard pay per click website (although unrelated to the Complainants’ products), and the Respondent’s WhoIs information was privacy shielded. Under such circumstances, the Complainants’ belief that they have a chance to succeed in the present proceeding might have been hopeful but was not completely absurd.

The fact that the disputed domain name is comprised of a generic word does not per se support a finding of reverse domain name hijacking, as a complainant might succeed with its complaint against the registration and use of a generic domain name under certain circumstances. (See Octopustravel Group Limited v. Alexander Rosenblatt aka Yana Belkova, WIPO Case No. D2011-0417).

7. Decision

For the foregoing reasons, the Complaint is denied.

Brigitte Joppich
Presiding Panelist

Louis-Bernard Buchman
Panelist

Richard G. Lyon
Panelist (Concurring except as to section 6.E)
Date: March 27, 2015

Concurring Opinion

I join the Panel’s Decision without reservation, and all of its opinion except section 6.E. I write separately only to note my view that the Panel should “declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” Rules, paragraph 15(e).

This is yet another case¹ in which a complainant offers no proof whatsoever of several allegations essential to its case. As the Panel acknowledges the Complainant has included no evidence of its use of its FIESTA mark, no evidence that the word fiesta is in any way specially associated with the Complainant, no evidence of the “status and fame of the trademark,... [or] whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning,”² and no evidence of Respondent’s use of the disputed domain name. In a case in which the disputed domain name consists entirely of an everyday word in English and Spanish these omissions are fatal to the Complaint and to my mind inexcusable, especially when coming from a represented Complainant.

The lack of evidence alone is grounds for a finding of abuse. “Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH” Tarheel Take-Out, LLC v. Versimedia, Inc., WIPO Case No. D2012-1668, citing Liquid Nutrition Inc., v. liquidnutrition.com/ Vertical Axis Inc., WIPO Case No. D2007-1598. Few things are more settled, or more fundamental under the Policy and Rules, than the requirement that material factual allegations must be proven, not simply alleged.³

Richard G. Lyon
Panelist (Concurring except as to section 6.E)
Date: March 27, 2015

¹ Compare, e.g., Mr. Arif Develier v. Domain Administrator / Network Services, MindViews Limited Liability Company, WIPO Case No. D2014-1367; Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., WIPO Case No. D2014-0878; Scandinavian Leadership AB, Mindo AB v. Internet Masters, WIPO Case No. D2012-1273

² WIPO Overview 2.0, paragraph 2.2.

³ If more were needed, there is more than a whiff here of a "Plan B" approach by the Complainant – instituting a Policy proceeding when dissatisfied with the pricetag a respondent places on the disputed domain name. The Complainant initiated an anonymous approach to try to acquire the disputed domain name "some weeks" prior to the filing of the Complaint. This too may be grounds for a finding of abuse, see, e.g., IMB Textil S.A. v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2014-1057, and "Plan B" cases collected at <rdnh.com>.