Marcario Casillas v. Maverick Group, Inc.
[Indexed as: Casillas v. Maverick]
[Indexed as: casillascigars.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0340
Commenced: 27 April 2000
Judgement: 11 June 2000
Presiding Panelist: Frederick M. Abbott
Domain name - Domain name dispute resolution policy - Trademark -
Service mark - Legitimate rights - Distinctive character - Constructive
use.
Complainant operated under, and had an application pending for, the
name Casillas Cigars. Respondent registered and used the name casillascigars.com.
Complainant alleged that Respondent's registered domain name is identical
to the Casillas Cigars mark and that Respondent has registered and used
the name in bad faith with no legitimate rights or interests in the name.
Held, Name Not Transferred.
Complainant's application for trademark registration on the Principal
Register constitutes constructive use of the mark which satisfies the Policy's
requirement that the Complainant have rights to the trademark or service
mark that is subject to abuse. Respondent's mere recollection without
documentary support is insufficient to challenge this.
The domain name is undoubtedly confusingly similar to Complainant's
service mark.
Respondent used the name for a bona fide offering of goods legitimately
acquired from Complainant. Complainant orally licensed Respondent
to use its mark in a limited capacity. Respondent registered the
name well in advance of Complainant's grant of license, and Complainant
was aware of and participated in Respondent's website. In addition,
Complainant supplied Respondent with product for sale over the internet.
Respondent deactivated the website once the business relationship with
Complainant ended. Thus, Respondent had a legitimate interest in
the name, and the issue of bad faith registration need not be considered.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Cases referred to
Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036,
1047, n.8, (9th Cir. 1999).
Da Costa v. Pubic Employees Relations Comm'n, 443 So.2d 1036, 1041 (Fla.
Dist. Ct. App 1983).
Ingersoll v. Kriseman, 124 B.R. 116, 121 (M.D. Fla. 1991).
Thomas Dillard Dep't Stores Inc., 116 F.3d 1432, 1437 (11th Cir. 1997).
Panel decisions referred to
America Online, Inc. v. QTR Corp., Forum File No. FA0001000092016 (NAF
Feb. 10, 2000).
Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March
16, 2000.
FaceTIme Communications v. Live Person, Inc., Forum File No. FA0001000092048
(NAF Feb. 18, 2000).
Heel Quik!, Inc. v. Goldman, File No. 92527 (NAF March 1, 2000).
Mary-Lynn Mondich, American Vintage Wine Biscuits, Inc. v. Shane Brown,
Case No. D00-0004 (WIPO Feb. 20, 2000).
Robert Ellenbogen v. Mike Pearson, Case No. 00-0001 (WIPO Feb. 20, 2000).
Stella D'oro Biscuit Co., Inc., v. The Patron Group, Inc., Case No.
D00-012 (WIPO Feb. 17, 2000).
World Wrestling Federation Entertainment, Inc. v. Bosman, Case No. D99-0001
(WIPO Jan. 14, 2000).
Abbott, Panelist: -
1. The Parties
The Complainant is Marcario Casillas d/b/a Casillas Cigars, with place
of business in Sacramento, California, United States of America (USA).
The Respondent is Maverick Group, Inc., with address in Reno, Nevada,
USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "casillascigars.com".
The registrar of the disputed domain name is Network Solutions, Inc.,
with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is
as follows:
a) The Complainant initiated the proceeding by the filing of a complaint
via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO")
on April 27, 2000, and by courier mail received by WIPO on April 28, 2000.
Payment by Complainant of the requisite filing fees accompanied the courier
mailing. On April 28, 2000, WIPO transmitted a Request for Registrar Verification
to the registrar, Network Solutions, Inc. On May 3, 2000, WIPO completed
its formal filing compliance requirements checklist.
b) On May 3, 2000, WIPO transmitted notification of the complaint and
commencement of the proceeding to Respondent via e-mail,telefax and courier
mail. WIPO transmitted the notification to Respondent at the separate addresses
listed on its Network Solutions' registration for Respondent, its Administrative
Contact and its Technical Contact. The courier could not complete delivery
at the addresses for Respondent and its Administrative Contact, and (per
an e-mail exchange with WIPO) the Technical Contact appears to have been
unwilling to retransmit the documents it received from WIPO to Respondent.
WIPO's attempted fax transmissions to the numbers provided by Respondent
were unsuccessful. WIPO's attempted e-mail transmission to the address
provided for Respondent's Administrative Contact was not successfully delivered
(return notification "user unknown").
c) On May 26, 2000, WIPO invited the undersigned to serve as panelist
in this administrative proceeding, subject to receipt of an executed Statement
of Acceptance and Declaration of Impartiality and Independence ("Statement
and Declaration"). On May 27, 2000, the undersigned transmitted by fax
the executed Statement and Declaration to WIPO.
d) On May 29, 2000, WIPO transmitted notification to Respondent of its
default in responding to the complaint by post courier and e-mail.
e) On May 29, 2000, the Complainant and Respondent were notified by
WIPO of the appointment of the undersigned sole panelist as the Administrative
Panel (the "Panel") in this matter. WIPO notified the Panel that, absent
exceptional circumstances, it would be required to forward its decision
to WIPO by June 11, 2000. On May 29, 2000, the Panel received an electronic
file in this matter by e-mail from WIPO. The Panel subsequently received
a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent
regarding further submissions, waivers or extensions of deadlines, and
the Panel has not found it necessary to request any further information
from the parties (taking note of Respondent's default in responding to
the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant, Marcario Casillas, is an individual resident of California
in the business of manufacturing and selling cigars. Goods of Complainant
are sold under the name "Casillas". Retail stores of Complainant are operated
under the name "Casillas Cigars".
Complainant has submitted a service mark registration application (filed
September 21, 1999) for "Casillas Cigars" on the Principal Register of
the U.S. Patent and Trademark Office (PTO) covering retail cigar store
services (serial number 75/804203)(Complaint, para. 13 and Annex C). Complainant
has submitted a trademark registration application (filed September 21,
1999) for "Casillas" on the Principal Register of the U.S. Patent and Trademark
Office (PTO) (serial number 75/804204)(Complaint, para. 13 and Annex C).
Complainant indicates that the aforesaid applications are pending. There
is no additional information on the record of this proceeding
regarding the status of such applications.
Complainant indicates that it has used "Casillas" and "Casillas Cigars"
in commerce in the United States since at least as early as 1973 (id.,
para. 14), and such information is included on Complainant's PTO applications
for registration (id., Annex C). Complainant has provided copies of advertising
brochures prepared for and used in its "Casillas Cigars" retail business
(id.).
Respondent registered and used the disputed domain name "casillascigars.com".
A Network Solutions' WHOIS database query response (Complaint, Annex A)
indicates that Maverick Group, Inc., with Administrative Contact at "Provost,
Gus", is the registrant of the domain name "casillascigars.com". The record
of this registration was created on June 26, 1998, and was last updated
on July 24, 1998.
In April or May 1999, Complainant and Respondent entered into an oral
agreement under which Respondent was licensed to operate a retail cigar
store in Las Vegas, Nevada, USA under the "Casillas Cigars" name and mark.
Respondent operated such store for approximately two months.
On April 22, 1999, Respondent filed an application to register the mark
"Casillas Cigars" (stylized) on the Principal Register (serial number 75/688,075).
In response to threat of litigation for infringement, unfair competition
and dilution by Complainant (by letter of September 9, 1999) (id., Annex
E), Respondent filed a notice of express abandonment of the aforesaid application
on October 26, 1999. Respondent, however, had indicated by e-mail of October
6, 1999 to Complainant that its attempted registration of the "Casillas
Cigars" had been denied by the PTO ("as I recall the registration was denied
because the mark is primarily a surname")
(id., Annex G).
By letter of September 9, 1999 (id., Annex E) Complainant demanded that
Respondent transfer the disputed domain name to it, on grounds that Respondent's
use of the name would likely cause consumer confusion. Respondent disputed
Complainant's statement of facts surrounding the trademark application,
and indicated:
"The domain name has been in use, also with the blessing of Mr. Casillas,
who gladly supplied me with the cigars that were sold over the Internet
from the site."
"As Mr. Casillas may or may not have told you, they bought out my interest
in the Las Vegas store in May of this year, and I have not had any association
with them since that time, which includes Internet sales. The cigar site
is inoperative, and will remain so until the expiration of the registration
next year. If Mr. Casillas wants the domain name, he can purchase the name
and site from me at a reasonable cost." (Respondent's e-mail to Complainant
of October 6, 1999, id., Annex G)
Responding to a subsequent e-mail from Complainant regarding the status
of this trademark and domain name dispute, Respondent stated:
"Re the website, I differ with your contention that this belongs to
Mr. Casillas. As you are probably aware, I registered the domain name and
developed the site with the full cooperation and approval of Mr. Casillas.
The site included various Casillas Cigar stores, individuals who work for
them, and a history of the company. In addition, Mr. Casillas provided
the cigars for retail sale, as both of our records will indicate. As such,
I am not willing to simply give this away. I am willing to sell the domain
name for the sum of $2,500, which roughly covers my development and hosting
costs to this point. Sincerely yours, Gus Provost" (Respondent's e-mail
to Complainant of October 15, 1999, id., Annex H)
Complainant furnished the foregoing correspondence with Respondent.
The authenticity of said correspondence is not in dispute.
The Service Agreement in effect between Respondent and Network Solutions
subjects Respondent to Network Solutions' dispute settlement policy, the
Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August
26, 1999, and with implementing documents approved by ICANN on October
24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy")
requires that domain name registrants submit to a mandatory administrative
proceeding conducted by an approved dispute resolution service provider,
of which WIPO is one, regarding allegations of abusive domain name registration
(Policy, para. 4(a)). Respondent has not contested that it is properly
before this Administrative Panel.
5. Parties' Contentions
A. Complainant
Complainant states:
"Complainant CASILLAS has operated a cigar-manufacturing business, first
in Cuba and then in the United States, for more than forty years. Complainant
CASILLAS currently manufactures cigars at a plant in Sacramento, California.
Complainant CASILLAS also operates eight retail outlets for cigars under
the CASILLAS CIGARS service mark." (Complaint, para. 12)
Complainant indicates that it has filed a service mark registration
application with the PTO for "Casillas Cigars" and a trademark application
for "Casillas" in September 1999 (Id., para. 13) (see Factual Background
supra).
Complainant indicates that the "Casillas" marks have been used in commerce
since at least October 1973, and Complainant has invested substantial time
and resources in promoting and advertising the marks in the United States
(id., paras. 14-15).
Complainant states:
"16. As a result of the foregoing, Complainant CASILLAS has developed
extremely valuable goodwill and an outstanding reputation in the Marks.
The Marks are famous and are an indication of high quality and of origin
exclusively with Complainant."
"17. In approximately April or May 1999, Complainant CASILLAS and respondent
MAVERICK entered into a verbal agreement under which Respondent MAVERICK
was licensed to operate a retail cigar store in Las Vegas, Nevada, under
the CASILLAS CIGARS
name and mark. Respondent MAVERICK operated the store for approximately
two months after which it abandoned the venture. At no time did Respondent
MAVERICK have permission to register the domain name casillascigars.com
or to develop a web site in connection with the Marks, nor was it granted
any rights in the Marks, other than the right to use the Marks for a retail
cigar store, under license, on a non-exclusive basis, limited to the Las
Vegas geographic market." (Id.)
Complainant indicates that Respondent attempted to register the "Casillas
Cigars" mark without its consent, and upon warning from Complainant agreed
to and did abandon its application (id., paras. 18-21) (see Factual Background
supra).
Complainant indicates:
"19. Even after the license agreement between Complainant CASILLAS and
Respondent MAVERICK terminated, Respondent MAVERICK continued to operate
a web site in connection with the casillascigars.com domain name and under
the Marks. A print-out from the web site as of August 12, 1999, is attached
as Annex D." (Id.)
Complainant states that Respondent registered the disputed domain name
without its consent, is no longer its licensee, and was never authorized
to use the "Casillas Cigars" mark in connection with a website (id., para.
22).
Complainant states that the disputed domain name is identical to the
"Casillas Cigars" mark (id., para. 22).
Complainant states on information and belief that Respondent has registered
and used the disputed domain name in bad faith, and that Respondent has
no rights or legitimate interests in the disputed domain name.
Complainant states:
"26. In the same September 9, 1999, letter by which counsel for Complainant
CASILLAS demanded that Respondent MAVERICK cease use of the Marks, counsel
for Complainant CASILLAS also demanded that Respondent transfer the domain
name casillascigars.com to Complainant.
27. Respondent MAVERICK responded to this demand by offering to sell
the domain name casillascigars.com to Complainant. See Annex G.
28. Respondent MAVERICK subsequently set a price of $2,500 for the domain
name and website content. See Annex H." (Id.)
Complainant indicates that "it is simply beyond dispute that Complainant
CASILLAS is the owner of the CASILLAS CIGARS mark" (id., para, 30), and
that its twenty-six year exclusive use establishes this.
Complainant states:
"31. Respondent MAVERICK has never been authorized by Complainant CASILLAS
to use the CASILLAS CIGARS mark as a domain name or in any other manner
in connection with a web site. Further, Respondent MAVERICK's limited right
to use the Marks in connection with the operation of a retail cigar store
in Las Vegas, Nevada, has long since terminated. As held in Heel Quik!,
Inc. v. Goldman, File No. 92527 (NAF March 1, 2000), use of a domain name
in violation of a license agreement cannot be a bona fide use within the
meaning of the Policy. In that case, as here, the respondent obtained no
ownership interests in the complainant's trademark and thus cannot be said
to have any rights or legitimate interests in respect of the domain name."
(id.)
Complainant states:
"33. Respondent MAVERICK's registration of a second level domain name
almost identical to Complainant's CASILLAS CIGARS mark, coupled with its
offer to sell the domain name to Complainant, establishes that Respondent
has used and registered the domain name in bad faith under the criteria
set forth in Section 4(b)(i) of the UDRP. Cf. World Wrestling Federation
Entertainment, Inc., v. Bosman, Case No. D99-0001 (WIPO Jan. 14, 2000)
(‘use and registration' was found under Section 4(b)(i) of the UDRP because
the respondent's offer to sell the domain name in issue established that
the respondent registered the domain name primarily for the purpose of
selling it to the complainant and therefore registered and used it in bad
faith); America Online, Inc., v. QTR Corp., Forum File No. FA0001000092016
(NAF Feb. 10, 2000) (identifying registrant as ‘This domain name is for
sale' in Whois directory showed intent to sell registration for profit
and established bad faith); Stella D'oro Biscuit Co., Inc., v. The Patron
Group, Inc., Case No. D00-012 (WIPO Feb. 17, 2000) (circumstantial evidence
supports findings of no legitimate rights or interests in the domain name
and that domain name has been registered and is being used in bad faith,
including willingness to sell domain name for $2,300); Mary-Lynn Mondich,
American Vintage Wine Biscuits, Inc. v. Shane Brown, Case No. D00-0004
(WIPO Feb. 20, 2000) (respondent asked complainant if she would like to
‘buy' the domain name; without contrary evidence, it may be assumed that
the registrant initially intended to ‘sell' it to complainant, supported
by failure to make good faith use of domain name for a substantial
period of time - over two years); Robert Ellenbogen v. Mike Pearson,
Case No. 00-0001 (WIPO Feb. 20, 2000) (respondent/administrative contact
asserted no relationship to domain name and asked that his name be removed;
domain name was listed on the ‘GreatDomains.com' web site for sale; fact
of trying to sell it supports finding of bad faith, even though there is
no evidence that this was the primary intent when the domain name was registered).
34. The offer to sell the domain name for a sum well in excess of the
cost of registration strongly evidences that Respondent MAVERICK used and
registered the domain name in bad faith. Moreover, nothing in the Policy,
however, indicates that direct evidence of bad faith must be presented.
To the contrary Section 4(b) simply enumerates some of the ‘circumstances'
to be
considered. As stated in the ICANN Second Staff Report on Implementation
Documents for the Uniform Dispute Resolution Policy (posted October 25,
1999), ‘the delineation of evidence of bad-faith is not intended to be
exhaustive.' <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>.
See also Thomas v. Dillard Dep't Stores Inc., 116 F.3d 1432, 1437 (11th
Cir. 1997) (stating that intent can be inferred from conduct as well as
circumstances); Ingersoll v. Kriseman, 124 B.R. 116, 121 (M.D. Fla. 1991)
(stating that intent can be proven by circumstantial evidence or inferred
from actions); Da Costa v. Public Employees Relations Comm'n, 443 So.2d
1036, 1041 (Fla. Dist. Ct. App. 1983) (stating that intent can be inferred
where the result is the reasonably foreseeable consequence of conduct).
35. Additionally, Respondent MAVERICK's continued use of the casillascigars.com
domain name to offer the same product as that sold by the Complainant,
i.e. cigars, after the termination of its license implies that Respondent
intended to attract, for commercial gain, Internet users to the registrant's
web site by creating a likelihood of confusion with the Complainant's mark
as set forth in Section 4(b)(iv) of the UDRP. See FaceTime Communications
v. Live Person, Inc., Forum File No. FA0001000092048 (NAF Feb. 18, 2000)
(holding that ‘[u]se of marks which are so similar for the same services
confuse the public and those desiring to obtain a particular entity's services
and products.').
36.There is simply no conclusion to be drawn from the circumstantial
evidence other than that Respondent MAVERICK either (i) primarily intended
(or intends) to sell the domain name casillascigars.com to Respondent and/or
(ii) intended to attract, for commercial gain, Internet users to the registrant's
web site, by creating a likelihood of confusion with the complainant's
mark as to the source, sponsorship, affiliation, or endorsement of its
web site or location or of a product or service on its web site or location.
This is precisely the type of bad faith behavior that is intended to be
penalized under the Policy." (id.)
Complainant requests that the Panel ask the Registrar to transfer the
domain name "casillascigars.com" from Respondent to it (id., para 37).
B. Respondent
Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted
by the Internet Corporation for Assigned Names and Numbers (ICANN) on August
26, 1999 (with implementing documents approved on October 24, 1999), is
addressed to resolving
disputes concerning allegations of abusive domain name registration.
This sole panelist has in an earlier decision discussed the background
of the administrative panel procedure, and the legal characteristics of
domain names, and refers to this earlier decision for such discussion 1.
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 for Uniform Domain Name
Dispute Resolution Policy (the "Rules"), establish procedures intended
to assure that respondents are given adequate notice of proceedings commenced
against them, and a reasonable opportunity to respond (see, e.g., para.
2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably
necessary to notify the Respondent of the filing of the Complaint and initiation
of these proceedings, and that the failure of the Respondent to furnish
a reply is not due to any omission by WIPO. Based on a detailed record
of attempts by WIPO to contact Respondent, it remains unclear whether Respondent
has
received actual notice of this proceeding. (See Factual Background,
supra). Respondent was well aware of the possibility that this proceeding
would be initiated by Complainant, and to the extent that Respondent failed
to update its Registration information to allow it to be contacted, difficulties
(if any) in respect to notification are due to its own actions or inactions.
Moreover, in light of the Panel's determination in this proceeding, Respondent
has not been prejudiced by lack of actual notice.
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 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;
(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.
The first issue to decide is whether the Complainant has rights in a
trademark or service mark.
Complainant has filed an application for registration of the service
mark "Casillas Cigars" on the Principal Register at the PTO, and has provided
evidence of its use of that service mark in commerce. Complainant has alleged
use of the mark in commerce since at least 1973 (see Factual Background,
supra). The Policy requires that a Complainant have "rights" in a trademark
or service mark that is subject to abuse by a Respondent (Policy, para.
4(a)(i)). It does not require that a mark be registered by a governmental
authority for such rights to exist. In U.S. law, trademark infringement
actions may be brought under the unfair competition provisions
of the Lanham Act on the basis of unregistered marks (and common law
rights) 2, and U.S. legislation authorizing infringement actions based
on abusive domain name registration does not require registration of a
mark as a condition for obtaining relief 3. In U.S. law, an application
for trademark registration on the Principal Register constitutes constructive
use of a mark, contingent on subsequent registration 4.
A claim based on an unregistered mark, including a personal name, requires
that the claimant establish the distinctive character of the mark or name
on which the claim is based 5.
In this proceeding, Complainant has made a prima facie offering that
the "Casillas Cigars" mark is distinctive. Respondent has, in effect, challenged
this prima facie offering by suggesting in an e-mail to Complainant that
the PTO rejected Respondent's application for that mark on the basis that
"Casillas" is a surname. However, since Respondent, not Complainant, was
acting before the PTO, and Respondent in any case made its assertion as
a tentative recollection (and without documentary support), the Panel does
not accept this as a valid challenge to the distinctive character asserted
by Complainant.
Respondent has not effectively rebutted Complainant's claim to rights
in the "Casillas Cigars" service mark. Complainant's claim to rights in
the mark requires it to pass at least two important hurdles in order to
meet the test of having acquired distinctiveness or secondary meaning.
"Cigars" is generic and, standing alone, it is not capable of being trademarked.
In order to establish trademark rights in a generic term, it must be shown
to have acquired secondary meaning in combination with another term or
symbol, and courts traditionally have imposed stringent tests to demonstrate
such secondary meaning. In addition, "Casillas" is a surname and must be
demonstrated to have acquired secondary meaning (in combination with "Cigars").
Complainant's claim to rights in the "Casillas Cigars" mark is not strong
(e.g., there is limited evidence of the scope of usage and consumer association).
However, for purposes of this administrative proceeding, the Panel presumes
that Complainant has rights in the service mark, "Casillas Cigars".
The Panel makes this determination in order to reach the "legitimate interests"
element of Complainant's complaint, and without intending to establish
evidence of Complainant's rights to the mark in any subsequent legal proceedings.
Respondent has registered the domain name "casillascigars.com". This
name is identical to Complainant's presumptive service mark "Casillas Cigars",
except that (1) the domain name eliminates the space between the
two words constituting the mark, (2) the domain name adds the generic
top-level domain name ".com", and (3) the domain name employs lower
case letters, while the service mark is generally used with an initial
capital letter on each word. For purposes of this proceeding, it is unnecessary
to decide whether, in light of these factors, Respondent's domain name
is "identical" to Complainant's service mark, since Respondent's domain
name "casillascigars.com" is without doubt confusingly similar to Complainant's
service mark "Casillas Cigars".
Complainant has met the burden of proving that Respondent is the registrant
of a domain name that is identical or confusingly similar to a service
mark in which the Complainant presumptively has rights, and for purposes
of this proceeding it has thus established the first of the three elements
necessary to a finding that Respondent has engaged in abusive domain name
registration.
The second element of a claim of abusive domain registration is that
the Respondent has no rights or legitimate interests in respect of the
domain name (Policy, para. 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)
… 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; …" (Policy,
para. 4(c))
The disputed domain name was registered by Respondent in June 1998.
Complainant indicates that it orally licensed Respondent to use its mark
in connection with a retail store in April or May 1999. Complainant supplied
its products to Respondent for sale, and Respondent indicates that it sold
those products from its website on the Internet. Complainant did not formally
object to Respondent's registration and use of the disputed domain name
until September 1999.
Complainant alleges in its complaint that Respondent was not authorized
to register the disputed domain name or to establish a website. However,
Respondent registered the disputed domain name substantially prior to Complainant's
acknowledged grant of a license for use of Complainant's service mark.
Respondent has indicated that (a) Respondent designed its website
with Complainant's knowledge (and participation) and (b) that Complainant
supplied it with the product it sold over the Internet. Complainant
has not asserted that it was unaware of Respondent's domain name registration
or website development prior to granting an oral license to use its mark
in connection with Respondent's retail store.
Respondent deactivated the website identified by the disputed domain
name after its business relationship with Complainant ended. (Complainant's
printout showing the Respondent's active site is dated August 12, 1999.)
The Panel determines that, on the basis of the record before it, Respondent,
before any notice to it of a dispute, used the disputed domain name for
a bona fide offering of goods legitimately acquired from Complainant. As
such, Respondent has a legitimate interest in the disputed domain name
within the meaning of paragraphs 4(a)(ii) and 4(c)(i) of the Policy.
Complainant has failed to establish the second element necessary for
a finding that Respondent engaged in abusive domain name registration.
The Panel therefore rejects Complainant's claim of abusive domain name
registration against Respondent, and denies its request that the Panel
ask the registrar to transfer the domain name "casillascigars.com" from
Respondent to it.
The Panel's determination is limited to the question whether Respondent
engaged in abusive domain name registration. This is the boundary line
of the Panel's authority. The Panel makes no determination regarding the
respective rights of the parties in regard to other legal questions.
7. Decision
Complainant, Marcario Casillas, has failed to establish that Respondent,
Maverick Group, Inc., has no rights or legitimate interests in the disputed
domain name "casillascigars.com" within the meaning of paragraph 4(a)(ii)
of the Policy. The Panel therefore rejects Complainant's claim of abusive
domain name registration against Respondent, and denies its request that
the Panel ask the registrar to transfer the domain name "casillascigars.com"
from Respondent to it.
Footnotes:
1. See Educational Testing Service v. TOEFL, Case No.
D2000-0044, decided March 16, 2000.
2. 15 USCS § 1125(a). See, e.g., Brookfield Communications
v. West Coast Entertainment, 174 F.3d 1036, 1047, n. 8, (9th Cir.
1999).
3. 15 USCS § 1125(d).
4. 15 USCS § 1057(c).
5. U.S. cyberpiracy prevention legislation protects distinctive
and famous marks. In order to be famous, a mark must be distinctive.
15 USCS § 1125(c).
Domain
Name Not Transferred
