Colombian Coffee Federation, Inc.; Republic of Colombia v. FutureDisk Media

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Republic

of Colombia, and its authorized designee, The Colombian Coffee Federation, Inc.

vs. Future Disk Media and George Haverly

Case No.

D2001-0219

1. The Parties

1.1 Complainant:

REPUBLIC OF COLOMBIA, and its authorized designee, the COLOMBIAN COFFEE

FEDERATION, INC., with a place of business at 140 East 57th Street,

New York, New York 10022, USA.

1.2. Respondent:

FUTURE DISK MEDIA and GEORGE HAVERLY, with a place of business at 617A

Seaman Avenue, Baldwin, New York, 11510, USA.

2. The Domain Name and

the Registrar

2.1. The subject

of the complaint is the domain name < colombiancoffeewholesale.com>

.

2.2. The registering

entity is Tucows, Inc.

3. Procedural History

3.1. A complaint

was submitted to the WIPO Arbitration and Mediation Center (hereinafter

called the Arbitration Center) on February 12, 2001 in accordance with

the "Uniform Domain Name Dispute Resolution Policy" (hereinafter called

the "Uniform Policy" as adopted by ICANN on 24 October 1999, and in accordance

with the Rules for the Uniform Policy that ICANN likewise adopted.

- Following

the corresponding Registrar verification, received from Tucows, Inc.

by e-mail on February 23, 2001, the Respondent was notified of the

complaint on February 27, 2001 and a term ending on March 18, 2001

was set for receiving his reply.

- On March

15, 2001, the Center received an e-mail from the Respondent in which

he partially replied to the complaint and advised that his attorneys

would subsequently submit a more detailed reply.

- On April

17, 2001, the Center received an e-mail from the Complainant requesting

that the proceedings commence in view of the Respondent's failure

to submit the subsequent response he had announced.

- By communication

dated April 20, 2001, the entire case file for these proceedings were

forwarded to Luis H. de Larramendi, sole panelist.

4. Factual Background

4.1. One of the

Complainants, the Republic of Colombia, is owner of US certification mark

registration No. 1.160.492 COLOMBIAN. The use and protection of this mark

in the United States is handled through the National Federation of Coffee

Growers of Colombia and specifically through its authorized designee,

the Colombian Coffee Federation, Inc. who is also a complainant in this

proceeding.

4.2. The Respondent

is Future Disk Media of US nationality.

4.3. In the opinion

of the panel, the following facts must also be taken into account for

purposes of these proceedings:

- <colombiancoffeewholesale.com>

, the domain name that is the subject of this proceeding, was registered on

October 20, 2000.

- No evidence

has been submitted to the effect that the Respondent used the domain

name in conflict or made preparations showing his intention to use

it prior to the date on which the dispute commenced.

- On December

29, 2000, the Complainants sent a letter to the Respondent informing

him of the existence of Certification Mark No. 1.160.492 COLOMBIAN

and demanding the transfer of the domain name.

- Respondent

placed content on the website identified by the domain name in conflict

on the same date as he received the letter from the Complainants,

i.e. on December 29, 2000.

5. Parties' Contentions

5.1. Complainant

The Complainants contend:

- That the

Republic of Colombia (hereinafter called the "Republic") is the proprietor

of Certification Mark Registration No. 1.160.492 COLOMBIAN.

- That on

behalf of the Republic, the National Federation of Coffee Growers

of Colombia (hereinafter called the "Federation") and its designee

The Colombian Coffee Federation, Inc. (hereinafter called "CCF") enforce

and protect the rights in the certification mark which, though registered

with the US Patent and Trademark Office on 7 July 1981, has been used

in the United States since September 1927.

- That the

certification mark is the instrument that the Republic uses to certify

that all coffee bearing the certifications mark was grown in Colombia,

that such coffee was subjected to standard inspection authorized by

the Republic; and that it was approved for export to the United States

of America as having passed the quality standards set by the Republic.

- That because

of the substantial amounts the Federation has spent on advertising

and promoting the certification mark, it has become symbolic of goodwill

and recognition by consumers who identify coffee bearing the mark

as high quality, 100% Colombian coffee.

- That the

certification mark and the domain name in conflict resemble each other

because the latter includes the former in its entirety.

- That, although

the Respondent currently uses the domain name to identify a website

through which Colombian Coffee is offered, the website was launched

only a few hours after the Respondent received a letter from the Republic's

representatives informing him of the Republic's intention to submit

the subject complaint.

- That, before

launching the website, the Respondent was not commonly known by the

domain name as an individual, a business or other organization.

- That, on

December 29, 2000, the Republic sent a letter to the Respondent by

e-mail and on paper (via courier). In that letter, Respondent was

informed of the existence of the certification mark and of the Republic's

belief that the domain name had been registered in bad faith.

- That the

Respondent replied by e-mail approximately one hour later and specifically

stated that he found no reason for relinquishing the domain name and

that Colombian Coffee was a generic expression.

- That the

incorporation of the certification mark into a domain name that identifies

a website purporting to sell and distribute coffee constitutes use

of the certification mark other than as a simple indication of the

geographic origin of the product and it constitutes an attempt to

misappropriate the prestige the public associates with the certification

mark and that, therefore, the domain name was registered and used

in bad faith.

As a result, the Complainants

petition that the domain name registration be transferred to the Federation.

5.2. Respondent

Although the Respondent

met the deadline of March 18, 2001, set by the Center in its notification

of February 27, 2001, he simply sent an e-mail to the Center making four

statements and announcing that a formal reply to the complaint would be

submitted subsequently by his representative.

The fact is that, in

the opinion of the Panel, that e-mail cannot be considered to be a reply

to the complaint. It meets none of the formal requirements of the Rules

and neither has the Center received any further arguments or documentation

as the Respondent himself announced.

The four statements

made by the Respondent are:

- That Colombian

Coffee Wholesale, Inc. is the name of the Respondent in the United

States.

- That the

Respondent sells and distributes only 100% Colombian coffee.

- That his

website will expressly state that it is not endorsed by the Federation

unless his application for membership is accepted.

- That "Colombian

coffee" or "Colombian" are terms used by thousand of businesses of

different sizes to promote their coffee products.

6. Discussion and Findings

6.1. Applicable

Rules

Paragraph 15 a) of

the Rules instructs the Panel to render its decision on the basis of:

- the statements

and documents submitted by the parties;

- the provisions

of the "Uniform Policy" and of the "Rules" themselves; and

- any rules

and principles of law that it deems applicable.

6.2. Admissibility

of the Complaint pursuant Paragraph 4 a) of the Uniform Policy

Paragraph 4 a) states

the following conditions:

- the domain

name registered by the Respondent must be identical or confusingly

similar to a trademark or service mark in which the Complainant has

rights.

- the Respondent

must have no rights or legitimate interest in respect of the domain

name; and

- the domain

name must have been registered and used in bad faith.

6.2.1. Domain

Name Identical or Confusingly Similar to Complainant’s Trademark

The panel believes

that certain prior considerations must necessarily be taken into account:

- The mark

in which the Complainant has evidenced registered rights is "COLOMBIAN"

- This term

is included in its entirety in the domain name <colombiancoffeewholesale.com>.

- The elements

of the domain name that prevent it from being totally identical to

the mark are "coffee", "wholesale" and ".com".

The Panel concludes

that the mark and domain name are similar, considering that the mark is

COLOMBIAN and that that term is the prominent and truly distinctive element

of the domain name. The ending of the domain name, WHOLESALE, simply refers

to how the product being offered is sold; COFFEE is descriptive; and ".com"

refers to the gTLD and, pursuant to numerous decisions rendered by the Center,

it must not be taken into account for purposes of comparison.

The Panel therefore

concludes that the Complainant has proven the presence of the first element

required by paragraph 4 a) of the Uniform Policy.

6.2.2. Rights

or Legitimate Interests in the Disputed Domain Name

In analyzing this requirement,

the Complainant simply stated that the Respondent launched its website after

receiving Complainant's letter informing that it intended to commence this

proceeding; that the Respondent was not commonly known by the domain name

in conflict; and that the Respondent is not making legitimate non-commercial

use of the domain name.

Although there is no

question that the Uniform Policy requires that the Complainant prove the

presence of the three premises set out under paragraph 4 a), the Panel believes

that the non-existence of a right cannot be proven; it can only be affirmed.

The effective existence of that possible right must be proven by the one

who claims to own it, namely the Respondent in this case.

None of the statements

contained in the e-mail that the Respondent sent to the Center on March

15, 2001 refer to circumstances that would allow the Panel to conclude that

the Respondent had rights or legitimate interests prior to the commencement

of the dispute. In this respect, the Panel wishes to point out the following:

- To merely

state that "Colombian Coffee Wholesale, Inc." is the corporate name

identifying the Respondent in the United States is neither acceptable

nor sufficient as Respondent provides no documentary evidence of either

the existence of the company or the date on which it was incorporated,

this being information that might have demonstrated that the Respondent

could have been known earlier by that name.

- Neither

does the statement that "Colombian coffee" or "Colombian" are expressions

used by thousands of businessmen to promote their coffee products

constitute an acceptable argument or proof of any right.

This statement

is directly related to the content of the Respondent's reply dated

December 29, 2000, to the earlier letter from the Complainant, in

which Respondent claimed that "Colombian coffee" was a generic term

at the present time.

The generic nature

of the term "Colombian coffee" alleged by the Respondent cannot be

accepted as a circumstance that provides him with rights or legitimate

interests. There are two reasons for this:

- Because

a trademark registration granted in the United States exists and

its existence has been evidenced through documents. Therefore, to

enter into a discussion of the generic nature of the term would

be tantamount to challenging the suitability of the registration,

something that is neither the intention nor the function of this

Panel.

- Because

that alleged generic nature would imply that anyone would be entitled

to use the term protected by the Complainant's certification mark

when the fact that the term was registered implies precisely a limitation

of its use to those who truly comply with the conditions for the

certification of the product they market.

- The Panel

also wishes to add that the non-existence of rights or legitimate

interests held by the Respondent in the domain name is equally inferred

from the absence of the formal reply to the complaint that the Respondent

himself announced would be submitted in his e-mail of March 15, 2001,

addressed to the Center. Had the Respondent been able to evidence

such rights or legitimate interests, he would logically have done

so.

This circumstance

can be interpreted only as either the non-existence of rights or legitimate

interests or as a lack of interest in evidencing them in the event

that they exist, something the Panel finds to be equivalent.

The panel therefore

concludes that the Complainant has also proven the presence of the second

premise of paragraph 4 a) of the Uniform Policy.

6.2.3. Registration

and Use in Bad Faith of the Domain Name < colombiancoffeesholesale.com>

In analyzing this last

premise, the Panel believes several aspects must be considered:

6.2.3.1. International

Renown of the COLOMBIAN Mark

In view of the weak

documentary support of the complaint which does not include any proof of

the international recognition of the certification mark that the Complainant

claims and even neglects to mention the existence of the <colombiancoffeefederation.com>

website as a means of verifying this point, the Panel itself consulted the

website, making use of the authority accorded to it by article 10 a) of

the Uniform Policy.

That website shows

the evolution of all the signs used by the Complainant, including "Colombian

coffee" and consequently "Colombian", and their impact on US consumers.

This information is

more than sufficient evidence that, at least until 1995, the term Colombian

Coffee (and, therefore, Colombian) was used by the Complainants as a term

to certify the characteristics that the US certification mark registration

guarantees in 1981, as indicated above.

In the Panel's opinion,

the Respondent who does business in the coffee sector, cannot deny knowledge

of either the high degree of renown of Colombian coffee as a product or

of the terms "Café de Colombia" or "Colombian coffee" as signs certifying

the origin of the product.

The Panel believes this

circumstance is sufficient to determine that registration of the domain name

in conflict cannot have been obtained in good faith pursuant to the criterion

followed by other decisions rendered by the Center such as WIPO

D2000-0018.

Additional circumstances

must also be considered such as the fact that the Respondent is not of Colombian

origin nor does he provide evidence of any connection to Colombia that might

give him some legitimate right. All these circumstances lead to the conclusion

that the registration of the domain name in conflict constitutes abusive

intent and, therefore, bad faith.

6.2.3.2. Passive

possession of the domain name in conflict

By applying certain criteria

contained in other decisions of the Center (such as D2000-0239),

it could be concluded that the domain name was used in bad faith since "when

someone registers a domain name in bad faith and with no legitimate interests,

it is difficult to imagine that he could use the registered domain name in good

faith". However, the Panel is of the understanding that, in this case, the domain

name has been the subject of passive possession by the Respondent. This is sufficient

cause to consider that the domain name has not only been registered in bad faith

but also used in bad faith in accordance with decisions such as WIPO D2000-1402,

WIPO D2000-0464 or WIPO D2001-0151.

This conclusion has

been reached here by jointly considering the following proven facts:

- In the second

paragraph of its letter of December 29, 2000, to the Respondent, the

Complainant states that "Although there is no operational website

at the Domain Name as of this writing..."

- Had the

Respondent given content to the website before or even on that same

date, but before receiving the Complainant's letter, he would have

said so in his e-mail reply to the Complainant, also dated December

29, 2000.

- Exhibit

F of the complaint includes printed copies of the content of the website

in question obtained on January 2, 2001. All of those copies state

"Last modified: December 29, 2000".

The Panel must assess

the status of this website before the dispute was known (in other words

before the date the dispute commenced, i.e. the date of the first letter

from the Complainant to the Respondent) and there is no doubt that, until

December 29, 2000, the website identified by the domain name in conflict

had no content, something that constitutes passive possession and, therefore,

use in bad faith.

Furthermore, the fact

that use of the domain name began only after receiving the Complainant's

warning letter can only be considered "use in bad faith" given that such

conduct can only be intended to offset the effects of the dispute proceeding

that the Complainant itself announced in that letter.

The Panel concludes

that the Complainant has also proven the presence of this element, as required

by paragraph 4 a) of the Uniform Policy.

7. Decision

For all the foregoing reasons,

the Administrative Panel decides that the complainant has proven the presence

of the three conditions required in Paragraphs 4 a) (i), (ii) and (iii). Consequently,

the Administrative Panel requires that the <colombiancoffeewholesale.com>

domain name be transferred to the Complainants and specifically to Colombian

Coffee Federation, Inc., as the Complainants request in their complaint.

Luis H.

de Larramendi

Sole Panelist

Dated: May

19, 2001