Monday , August 15 2022

Sexican.com: Sexy Mexican portmanteau sold at Uni Market got UDRP’ed

A sexy portmanteau such as “Sexican” deserves praise from brand specialists; the “sexy Mexican” combo is represented by the domain Sexican.com since 2005.

The domain was sold in 2017 via the Uni Market for a “substantial sum” but someone claiming rights to the mark SEXICAN filed a UDPR after sending a cease and desist letter.

The Respondent sought $30,000 dollars for Sexican.com which they initially planned to develop. For the record, Sexican.com was sold in 2017 for $3,000 dollars. Source: Namebio.

Luca Barbero, Panelist at the Forum (NAF) pointed out that the Complainant’s mark was registered in 2021 although it existed as far back as in 2004 before being cancelled in 2011.

He ordered the domain Sexican.com to remain with the Respondent.

Fun note: The panelist typo’ed the SEXICAN trademark several times in the UDRP document, referring to it as SEXYCAN. 😀

Lourdes Lori Carbajal Torres v. John Rance

Claim Number: FA2206002002301

PARTIES

Complainant is Lourdes Lori Carbajal Torres (“Complainant”), represented by Darren J. Quinn of Law Offices of Darren J. Quinn, California, USA. Respondent is John Rance (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is sexican.com, registered with GoDaddy Online Services Cayman Islands Ltd.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Luca Barbero as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 28, 2022; the Forum received payment on June 28, 2022.

On June 29, 2022, GoDaddy Online Services Cayman Islands Ltd. confirmed by e-mail to the Forum that the sexican.com domain name is registered with GoDaddy Online Services Cayman Islands Ltd. and that Respondent is the current registrant of the name. GoDaddy Online Services Cayman Islands Ltd. has verified that Respondent is bound by the GoDaddy Online Services Cayman Islands Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On June 29, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to [email protected] Also on June 29, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on July 14, 2022.

On July 20, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Luca Barbero as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant submits that its trademark SEXICAN has been used in commerce since at least 2003 in connection with SEXICAN branded clothing and accessories.

Complainant contends that the disputed domain name is identical to its registered the trademark SEXICAN as it incorporates the mark in its entirety with the mere addition of the generic Top Level Domain “.com”.

Complainant states that Respondent has no rights or legitimate interests in the sexican.com domain name as Complainant has not authorized or licensed Respondent to use the trademark SEXICAN, or ever given Respondent permission to use its SEXICAN trademark in any way.

Complainant further contends that Respondent is not commonly known by the sexican.com domain name and has failed to use it in connection with a bona fide offering of goods or services or a legitimate, non-commercial or fair use, as it is offering the sexican.com domain name for sale and Respondent implicitly requested an offer of over $30,000 USD to transfer the sexican.com domain name in an exchange of correspondence submitted as Exhibit G to the Complaint.

Complainant submits that Respondent registered and is using the sexican.com domain name in bad faith as Respondent is disrupting Complainant’s business and attempting to confuse and attract users to its website for its own financial gain. Complainant states that Respondent implicitly requested an offer of over $30,000 USD to transfer the sexican.com domain name.

Complainant also states that Respondent ignored Complainant’s cease-and-desist letter.

Lastly, Complainant asserts that, on balance of facts, it is more likely than not that Respondent knew of Complainant and its trademark at the time of registering the disputed domain name and that Respondent should thus be found to have registered and used the same in bad faith.

B. Respondent

Respondent claims that he does have legitimate interest in the sexican.com domain name since he purchased it for its inherent value as a generic common dictionary term made up of the two words “sexy” and “Mexican”, with the intention of using it to develop a website in the future. Respondent asserts that he purchased the sexican.com domain name from a previous owner on March 30, 2017 through a legal transaction which was brokered by UniRegistry Domain Services, paying a substantial price to acquire it.

Respondent also asserts that Complainant has not provided proof of the fact that its trademark is well-known, nor that Complainant enjoys a broad fame such that consumers are likely to associate the sexican.com domain name only to Complainant. Complainant also contends that a search for the “sexican” term on Google, returns 195,000 results but the first reference to Complainant is on page 3 and is associated not to the term ”sexycan” alone, but to “Sexycan Clothing”.

Respondent underlines that the Complaint mainly revolves around the assertion that Respondent is offering the sexican.com domain name for sale, but Respondent argues he does not have control over the display of offer for sale as the resolving webpage is merely a parking page. Respondent also claims that many well-known websites have similarly worded advertisements.

Respondent explains that he purchased the sexican.com domain name with the intent of using it, but that he still has not published any content due to the Covid 19 pandemic.

With reference to bad faith, Respondent contends that Complainant’s late claim is barred by laches since the sexican.com domain name was registered on January 1, 2005 by Respondent’s predecessor, which is more than 17 years earlier and Complainant has provided no excuse for such late claim.

Respondent claims that the fact that Complainant waited 17 years to bring the Complaint, without any excuse for the delay, raises the inference that Complainant did not truly believe Respondent was engaged in bad faith registration or use of the sexican.com domain name.

Furthermore, the Respondent asserts that Complainant has failed to provide any proof of bad faith registration and use under Policy (4)(a)(iii), since it should have proved in which way the sexican.com domain name was registered and is being used in bad faith and claims that registration in bad faith is anyway insufficient if one does not use the domain name in bad faith.

Respondent claims that, considering his intent was not that of offering for sale the sexican.com domain name, but of using it for a website, the message cited on the registrar parking page does not imply Respondent’s voluntary will to sell the disputed domain name but is simply a standard message used by the registrar, thus there is no bad faith to be implied. Respondent also submits that, in any case, offering a domain name for sale, is not in itself a violation of the Policy.

Moreover, with regards to Complainant’s claim that Respondent impliedly stated that the “right price” for the sexican.com domain name is over $30,000, Respondent states that he was contacted by a third party who inquired about the sexican.com domain name and only mentioned to have received prior offers of $30,000USD, without requesting an offer for the sexican.com domain name.

With reference to Complainant’s assertion concerning Respondent’s failure to reply to the cease-and-desist letter sent by the Complainant, Respondent rebuts that he never received the cease-and-desist letter in the first place, since, as also shown in the records, the letter was sent to Go Daddy directly which then sent an email message to Complainant’s attorney on May 16, 2022 instructing him to direct his concerns to Uniregistry. However, the attorney never resent that letter to Uniregistry. Instead, he just filed an online report. Respondent submits that no proof has been provided to show that the Cease and Desist letter was actually sent and delivered to Respondent.

Respondent also underlines that Complainant should have been aware of the email address of the Respondent considering that the person who was commissioned by Complainant to contact the Respondent in the attempt of finding out the purchase price for the dispute domain name, had an email address to contact Respondent.

FINDINGS

Complainant was established in 2000 by Lori Carbajal and manufactures and sells clothing and cosmetics under the trademark SEXICAN, which derives from a mix of the words “Mexican” (referring to the owner’s Mexican origins) and “sexy”, referring to the clothing style.

Complainant has provided evidence of ownership of the following trademark registration:

– United States trademark registration No. 6574756 for SEXICAN (word mark), filed on January 21, 2021 and registered on November 30, 2021, claiming first use on January 23, 2003, in international classes 3, 9, 14, 16, 18, 21 and 25.

Complainant was also the owner of the United States trademark registration No. 2874994 for SEXICAN (word mark), filed on September 4, 2003 and registered on Aug. 17, 2004, in International class 25. Such trademark registration was though cancelled in 2011 because Complainant did not file an acceptable Section 8 declaration of use of the trademark.

Complainant is also the owner of the domain name sexicanclothing.com, which was registered on July 17, 2003 and is currently used by the Complainant to promote its clothing products under the trademark SEXICAN.

The sexican.com domain name was registered on January 1, 2005 and redirects to a parking page provided by Uniregistry, displaying the following statement on the top of the page: “Click here to Buy SexiCan.com as your website name or call 1-561-898-0724”.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has provided evidence of ownership of the United States trademark registration No. 6574756 for SEXICAN (word mark), registered November 30, 2021. Registration with the USPTO may sufficiently demonstrate rights in a mark under Policy 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent has rights in the mark SEXICAN under Policy 4(a)(i).

The Panel notes that the sexican.com domain name is identical to the trademark SEXICAN in which Complainant claims to have trademark rights as it reproduces the trademark in its entirety with the mere addition of the generic Top Level Domain “.com”. See Solium Capital ULC v. all suosi, FA 1997566 (Forum June 20, 2022), finding that the addition of the gTLD “.vip” to the trademark SOLIUM in the domain name solium.vip, did not serve to distinguish the domain name from the complainant’s mark, which was found the distinctive component of the domain name.

Therefore, the Panel finds that the Complainant has proven that the sexican.com domain name is identical to a trademark in which the Complainant has established rights under Policy 4(a)(i).

Rights or Legitimate Interests

In light of the Panel’s findings below, it is not necessary to address the issue of whether the Respondent has rights or legitimate interests in respect of the sexican.com domain name.

Registration and Use in Bad Faith

Complainant is required, under Policy 4(a)(iii), to prove that Respondent registered and is using the sexican.com domain name in bad faith.

The Panel notes that the sexican.com domain name was registered on January 1, 2005, over 1 year after Complainant filed with the USPTO its first trademark application for SEXYCAN (No. 2874994) – which was subsequently cancelled, in 2011 –. Complainant is also the owner of a valid US trademark registration for SEXYCAN (No. 6574756), which was filed on January 21, 2021 claiming January 23, 2003 as first use date, and operates its website at the domain name sexicanclothing.com, which was registered on July 17, 2003.

Respondent claimed to have acquired the disputed domain name from a prior owner on March 30, 2017, as it can be indeed inferred from the correspondence with Uniregistry provided by Respondent as Exhibit 1 to the Response.

The Panel deems appropriate to preliminarily address the defense of laches raised by Respondent, who claimed that laches is applicable to the present case since Complainant filed the Complaint 17 years after the – initial – registration.

The Panel finds that the doctrine of laches does not apply to the present case since, as held in several prior cases, the UDRP remedy is injunctive rather than compensatory. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002): “The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”. See also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006), finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value; and Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006): “Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy”.

However, the Panel notes that a complainant’s delay in filing a complaint could make it more difficult for the complainant to establish its case on the merits.

In the present case, the Panel finds that Complainant has made conclusory allegations of bad faith without adducing specific evidence to demonstrate that Respondent registered the sexican.com domain name in bad faith. As held in Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015), “Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith”. See also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015), finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding.

The Panel notes that, at the time Respondent acquired the sexican.com domain name, the first Complainant’s trademark (No. 2874994) had been already cancelled by the USTPO and the second trademark registration (No. 6574756) had not yet been filed by Complainant. Moreover, Complainant has not provided any evidence of use of its trademark SEXICAN either offline or online apt to demonstrate that Respondent could have been aware of its trademark at the time of registration of the sexican.com domain name.

The Panel acknowledges that Complainant registered its domain name sexicanclothing.com in 2003, but notes that no evidence has been submitted to demonstrate that such domain name was used by Complainant in connection with its SEXICAN branded products at the time the sexican.com domain name was acquired by Respondent in 2017. The Panel has also consulted the Internet Archive (www.archive.org) to obtain an indication of how Complainant’s domain name may have been used in the past but found no screenshots regarding this domain name.

The Panel also notes that, based on a search for “sexican” on main search engines, such term appears to be used by several other entities and not to be exclusively referrable to Complainant.

In addition to the above, Complainant has not submitted any element from which the Panel could infer that Respondent was actually aware of Complainant’s trademark SEXYCAN at the time it acquired the sexican.com domain name and that Respondent intended to target Complainant’s trademark and trade-off Complainant’s trademark rights also through the use of the sexican.com domain name.

Indeed, according to the records, the disputed domain name has been pointed to a parking page of the provider Uniregistry, where no reference to Complainant’s trademark is displayed. Moreover, in the exchanges of correspondence submitted by Complainant, there is no element suggesting that Respondent registered the disputed domain name in bad faith with the primary intent to sell it to Complainant. As held in the prior case Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002), “[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner”.

In view of the foregoing, the Panel finds that the Complainant has failed to prove that Respondent registered and used the sexican.com domain name in bad faith under Policy 4(a)(iii).

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the sexican.com domain name REMAIN WITH Respondent.

Luca Barbero, Panelist

Dated: August 4, 2022

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