PataNegra.com : A #domain registered in 1996 threatened via the #UDRP process

Imagine receiving a UDRP for a domain name registered 24 years ago. PataNegra.com was registered in 1996, and in 2020 a Spanish company claimed rights to the PATA NEGRA mark.

According to the UDRP, Complainant, J. Garcia Carrion, S.A. registered the trademark PATA NEGRA for wine with multiple registries, including the Spanish Patent and Trademark Office (“SOPM”) as early as 1984, and the United States Patent Office (“USPTO”) in 2003.

Meanwhile, the Respondent is using the domain PataNegra.com since its registration in 1996 for commercial software development:

The disputed domain name is not confusingly similar because Respondent registered the <patanegra.com> domain name on June 15, 1996 and has been using the name PATANEGRA as its trade name since that time. Respondent’s PATANEGRA SOFT is also a registered trademark with the Spanish Patent and Trademark Office (“SOPM”) dating to 2001.

The NAF panelist delivered a finding favoring the Respondent, and denied transfer of the domain to the Complainant. Full details on the PataNegra.com decision follow:

J. Garcia Carrion, S.A. v. Patanegra Soft S.L. / Antonio Jesus Gil San Julian

Claim Number: FA2002001881868

PARTIES

Complainant is J. Garcia Carrion, S.A. (“Complainant”), represented by J. Garcia Carrion, S.A., Spain. Respondent is Patanegra Soft S.L. / Antonio Jesus Gil San Julian (“Respondent”), Spain.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <patanegra.com>, registered with OVH sas.

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.

Steven M. Levy, Esq. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 4, 2020; the Forum received payment on February 4, 2020.

On February 4, 2020, OVH sas confirmed by e-mail to the Forum that the <patanegra.com> domain name is registered with OVH sas and that Respondent is the current registrant of the name. OVH sas has verified that Respondent is bound by the OVH sas 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 February 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2020 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 postmaster@patanegra.com. Also on February 10, 2020, 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 March 2, 2020.

On March 9, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant, J. Garcia Carrion, S.A. registered the trademark PATA NEGRA for wine with multiple registries, including the Spanish Patent and Trademark Office (“SOPM”) as early as 1984, and the United States Patent Office (“USPTO”) in 2003. Respondent’s <patanegra.com> domain name is confusingly similar as it incorporates Complainant’s entire PATA NEGRA mark.

Respondent has no rights or legitimate interests in the <patanegra.com> domain name because Complainant owns the trademark PATA NEGRA.

Respondent registered or uses the <patanegra.com> domain name in bad faith. Respondent fails to make an active use of the disputed domain name.

B. Respondent

The disputed domain name is not confusingly similar because Respondent registered the <patanegra.com> domain name on June 15, 1996 and has been using the name PATANEGRA as its trade name since that time. Respondent’s PATANEGRA SOFT is also a registered trademark with the Spanish Patent and Trademark Office (“SOPM”) dating to 2001.

Respondent has rights and legitimate interests in the <patanegra.com> domain name as Respondent has been using the domain name continuously for its business since 2001. Respondent has a legitimate business providing programming for computers and other electronic equipment whereas the Complainant’s business is focused only on a very different business involving the sale of wine.

Respondent does not use the <patanegra.com> domain name in bad faith as Respondent actively uses the domain name to promote its legitimate business.

FINDINGS

(1) Complainant fails to prove that the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;

(2) Complainant fails to prove that Respondent has no rights to or legitimate interests in respect of the domain name; and

(3) Complainant fails to prove that the disputed domain name was registered and is being used by Respondent in bad faith.

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

As a threshold matter, paragraph 4(a)(i) of the Policy requires that the Complainant must prove the it has rights in a relevant trademark or service mark. Complainant asserts rights in the PATA NEGRA mark based upon registration with the SOPM and other national trademark offices. Registration of a mark with multiple trademark organizations is sufficient to establish rights in said mark per Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.) Here, Complainant provides a list of its trademark registrations for the PATA NEGRA mark.

However, the named Complainant in this case does not appear to be the owner of the cited trademark registrations. This deficiency may indicate that Complainant lacks standing to bring the present dispute. See AMCO Marketing Corporation v. Zeshan Kassam / Remco Insurance, FA 1535370 (Forum Jan. 16, 2014) (Named Complainant is AMCO Marketing Corporation but “[t]he registration certificate for the Mark, however, shows the registered owner thereof as one ‘Rehmat Peerbhai (Texas Corporation),’ of Houston, Texas. *** The Panel is unable to conclude that Complainant has rights to the Mark based upon the USPTO registration.”); MNM Investments, LLC; Matthew Moore v. JAROSALW MATULA, FA 1611023 (Forum Apr. 30, 2015) (“There no evidence in the record to support the claim that Complainant is the current assignee and holder of the BIG DOG MOTORCYLES trademark.”) While the named Complainant here is J. Garcia Carrion, S.A., the owner of Complainant’s various trademark registrations is a company named Grupo de Bodegas Vinartis, S.A. As there is no information in Complainant’s pleadings to indicate the existence of a relationship between it and the owner of the registered trademarks, and as the Complaint contains insufficient evidence of common law trademark rights inuring to the named Complainant[i], the Panel is unable to determine whether Complainant is the owner of any trademark rights in the PATA NEGRA mark. Therefore, the Panel finds that Complainant has not demonstrated its rights in the PATA NEGRA mark per Policy ¶ 4(a)(i) and thus lacks standing to bring the present case.

Rights or Legitimate Interests

Although this case may be put to rest based upon Complainant’s lack of standing, the Panel feels it worthwhile to examine the remaining elements of Policy ¶ 4(a). With regard to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Should it succeed in that effort the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).

The full extent of Complainant’s assertions relevant to Policy ¶ 4(a)(ii) are that “[t]he domain patanegra.com is empty (it has no content at all). It is not serving any purpose.” In rebuttal, Respondent argues that it has rights and legitimate interests in the <patanegra.com> domain name because it has been operating its business under the Patanegra Soft mark continuously since 1996 and it submits a copy of its Spanish certificate of incorporation under the name Patanegra Soft SL. It also submits evidence that it has obtained registrations of the PATANEGRA SOFT mark with the SOPM. As for Complainant’s assertion that the disputed domain name is not being used, Respondent states that it hosts “[a] courtesy page” at the website of the disputed domain name. An independent review of the <patanegra.com> confirms this. Respondent also claims that the disputed domain name is used for an “active intranet” and service of an “SAAS (cloud-based) application” and it provides screenshots showing its use of the domain name. A respondent’s use of a disputed domain name in connection with a legitimate business may evince rights and legitimate interests. See Navigant Consulting, Inc. v Bradley Shive / Navigant Technologies, FA 1587953 (Forum Dec. 17, 2014) (finding that respondent had rights and legitimate interests in the <naviganttechnologies.com> and <naviganttech.com> domain names because respondent had provided evidence of doing business as “Navigant Technologies” “before Complainant’s registration of its NAVIGANT marks and before receiving a notice of [the domain] dispute”). Here, Respondent has provided sufficient evidence that it operates a legitimate business under the name Patanegra Soft for nearly 20 years.

In light of the pleadings and evidence before it, the Panel holds that Complainant has failed to make a prima facie case under Policy ¶ 4(a)(ii) and that, in any event, Respondent has demonstrated that it does have rights and legitimate interests in the <patanegra.com> domain name.

Registration and Use in Bad Faith

The Panel further finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. 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 Jul. 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).

As the Panel has concluded that Respondent has rights or legitimate interests in the <patanegra.com> domain name pursuant to Policy ¶ 4(a)(ii), it may also find that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).

Respondent argues that it actively uses the <patanegra.com> domain name to promote its legitimate business. Using a disputed domain name for a legitimate business purpose may not be bad faith under Policy ¶ 4(a)(iii). See Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that because “Respondent neither offered the Domain Name for sale, nor wanted it to disrupt Complainant’s business, [nor] prevent Complainant from reflecting the mark in its domain,” it did not register or use the domain name <metagen.com> in bad faith) Here, Respondent asserts that it is using its website to promote its legitimate business and that it otherwise uses the <patanegra.com> domain name in ways that are not visible to the public as supported by the screenshots submitted into evidence. Respondent further argues that its software and technology business is in a very different market than Complainant’s business of selling wine, thus resulting in no likelihood of confusion. The Panel agrees with Respondent and finds that it did not register or use the <patanegra.com> domain name in bad faith.

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 <patanegra.com> domain name REMAIN WITH Respondent.

Steven M. Levy, Esq., Panelist

Dated: March 10, 2020

[i] While Complainant submits a sales report listing various wines followed by 2018 and 2019 sales figures, this document makes no mention of J. Garcia Carrion, S.A. In any event, this document does not indicate that Complainant owned rights to the asserted trademark at the time that Respondent registered the disputed domain name.

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