Mi Cocina, Ltd. v Melinda Garcia

WIPO Case No. D2023-4014

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Mi Cocina, Ltd. v. Melinda Garcia

Case No. D2023-4014

1. The Parties

Complainant is Mi Cocina, Ltd., United States of America (“United States”), represented by Munsch Hardt,

Kopf & Harr, P.C., United States.

Respondent is Melinda Garcia, United States.

2. The Domain Name and Registrar

The disputed domain name <micocinafoodtruck.com> (hereinafter “Domain Name”) is registered with

Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25,

2023. On September 26, 2023, the Center transmitted by email to the Registrar a request for registrar Complaint. The Center sent an email communication to Complainant on September 29, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 29, 2023.

verification in connection with the Domain Name. On September 29, 2023, the Registrar transmitted by
email to the Center its verification response disclosing registrant and contact information for the Domain

The Center verified that the Complaint together with the amendment to the 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 the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 3, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2023. Respondent did not submit any response. Accordingly, the

Center notified the Respondent’s default on October 24, 2023.

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The Center appointed Lawrence K. Nodine as the sole panelist in this matter on November 3, 2023. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Since 1991, Complainant uses the trademark MI COCINA (the Mark), which translates as “My Kitchen”, in

association with a restaurant business. Complainant owns four United States Trademark Registrations:

-	United States Trademark Registration No. 2,315,142 (registered on February 8, 2000) (standard word mark) (restaurant services)
-	United States Trademark Registration No. 2,315,143 (registered on February 8, 2000 (stylized design
and lettering) (“restaurant services”)
-	United States Trademark Registration No. 2,315,144 (registered on February 8, 2000) (stylized lettering) (restaurant services)
-	United States Trademark Registration No. 5,889,603 (registered on October 22, 2019) (standard word mark) (for class 29 and 30.)

Complainant owns the domain name <micocina.com> where Complainant promotes its restaurant and food truck business.

Complainant offered no allegations or evidence about the geographical extent of the Parties’ business operations. Accordingly, the Panel visited the websites of both Parties. It appears that Complainant’s

restaurant business is based in Texas, primarily in the Dallas Fort Worth Area, although it also has a

restaurant in Oklahoma City.

Respondent operates a food truck in Fountain, Colorado. The Domain Name was registered December 11,

2022. A simple search indicates that Respondent has been in business for at least 10 years.

5. Parties’ Contentions

A. Complainant

Complainant contends that it owns trademark rights in the Mark, which it began using the term MI COCINA in connection with its restaurant chain in 1991 and for which it secured several trademark registrations as noted

above. Complainant contends that the Domain Name includes an identical reproduction of Complainant’s

Mark.

Complainant contends that Respondent infringes its trademark rights, and that it has given Respondent actual notice of the dispute starting in January 2023.

In March 2023, Complainant’s counsel asked Facebook to remove Respondent’s Facebook page,

explaining:

“I represent Mi Cocina, Ltd., a Texas limited partnership that has owned the federal trademark in the words,

“Mi Cocina” since 2000. (Registration No. 2315142) This trademark prevents all third-parties from using the

words “Mi Cocina” together in any form or style. Mi Cocina, Ltd. also owns additional trademarks in various

“Mi Cocina” logos, but the above-referenced infringer is not using those logos. It is, however, using the

words “Mi Cocina” as part of its username and throughout all of its posts and related content, which

constitutes trademark infringement. Thus, we request that its Facebook account be immediately taken

down”.

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In April 2023, Facebook removed or disabled Respondent’s Facebook page.

Complainant contends that, because Respondent had constructive notice of Complainant’s trademark

registrations, it registered and used the Domain Name in bad faith.

Complainant also adduces evidence of a 2019 lawsuit filed against an Arizona company using a “mi cocina”

mark for a restaurant, and also provides evidence of an injunction issued by an Arizona court; the Panel

notes that this judgement was based on a default under the applicable rules of civil procedure.

B. Respondent

Respondent did not reply to the Complaint.

C. Panel Order

The Panel notes that Respondent began her business under the name “Mi Cocina” approximately ten years ago. Specifically, the Panel notes Facebook references to Respondent and her “Mi Cocina” food truck, including a profile of Respondent Melinda Garcia that describes her as “owner and CEO of Mi Cocina Food

Truck 13 November 2011 to present.” The Panel also noted a second link to a recent posting promoting

“Mi Cocina’s 10th Annual Thanksgiving Tamales.”

Because this evidence was not in the record, the Panel invited both parties to respond to the evidence.

Complainant responded that the second link (to the “Mi Cocina’s 10th Annual Thanksgiving Tamales” posting) was inoperable, and included a screenshot indicating that “this page isn’t available.” Complainant did not address the first link to Respondent ‘s profile. Because Complainant reported that the first link was

not operable, the Panel issued a second Procedural Order attaching a copy of the “Mi Cocina’s 10th Annual

Thanksgiving Tamales” posting and gave the Parties another opportunity to respond, but neither Party did

so.

Complainant did not offer any facts to contradict or call into question the factual inference that Respondent

began her “Mi Cocina Food Truck” business approximately ten years ago.

Instead, Complainant argued that it obtained a federal trademark registration twenty years ago in 2000, which was before Respondent began her business, even if that was ten years ago. Complainant did little

more than reemphasize its constructive notice argument. Complainant also contended that Facebook’s

removal of Respondent’s “Mi Cocina food truck” page gave Respondent actual knowledge of Complainant’s

trademark rights, and, consequently, that any continued use of “Mi Cocina” on Facebook was evidence of

bad faith. Complainant also argued that the length of time the Respondent has used “Mi Cocina” is irrelevant

because the doctrine of laches does apply to actions under the Policy and,

Respondent did not respond to the Panel Order.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Domain Name is confusingly the Mark in which Complainant has rights as

demonstrated by Complainant’s trademark registrations.

The addition of “foodtruck” does not avoid this finding as the Mark is still recognizable within the Domain

Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 1.7.

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The Panel finds that Complainant has satisfied Policy paragraph 4(a)(i)

B. Rights or Legitimate Interests

Complainant’s contention is that, because Respondent infringes its trademark under United States law,

Respondent has no rights or legitimate interests under the Policy. This allegation is not sufficient to prove that Respondent has no rights or legitimate interest in the Domain Name. Allegations of infringement under national law would not carry any particular weight under the Policy. In Walbro Engine Management, LLC v. Registration Private, Domains By Proxy, LLC /shahrokh Gabbaypour, Express Fuel Pumps, WIPO Case No.

D2021-2409

, the Panel observed that “ICANN Second Staff Report on Implementation Documents for the registrations’ made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting

and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts [. . .] and calls for

., Board of Trustees of the

registrars not to disturb a registration until those courts decide.” See alsowidely recognized principle that the Policy is designed to deal with clear cases of cybersquatting”, citing,

Clockwork IP LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace, WIPO Case No.

D2009-0485 (“UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark

infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the

courts”).

Facebook’s takedown of Respondent’s page is not relevant because there is no basis for equating

Facebook’s takedown criteria – which it is noted, are not known, or to the extent they are, they are not

articulated in the evidence provide by Complainant – with the elements of the Policy. Facebook’s answer to Complainant’s takedown request does not provide any information whatsoever about the process or criteria

Facebook used to make its decision (nor is it clear if there is an appeal route).

Complainant does not allege facts or offer evidence directed at the relevant issue, which is whether Respondent is targeting and/or impersonating Complainant; it cannot be overlooked here that while

Complainant does enjoy a federal trademark registration, the terms comprising the mark mean “my kitchen”

and, accordingly have a descriptive connotation. Consequently, it is plausible that Respondent adopted the

Domain Name to exploit its descriptive meaning without any intention to target Complainant.

The Panel has compared the Parties’ websites and finds no evidence that Respondent is impersonating or

targeting Complainant. While there are some similarities in the color schemes and layout, the Parties use their own very different logos. Not surprisingly, some of the menu items are similar, but most are different and the layout of the menus is different.

It also appears that Respondent began her business about 10 years ago in Fountain, Colorado, which is

more than 700 miles from Complainant’s base in Dallas, Texas. The Panel reviewed Complainant’s

“Locations” page to determine that Complainant’s business is primarily in Dallas, although it has a location in

Oklahoma City. There is no evidence that that Complainant does business in or enjoys any reputation in
Colorado where Respondent operates her food truck.

The Panel also notes that Respondent began her business at least 10 years ago. This is clear by looking at the evidence that Complainant submitted to Facebook (which it provided in its pleading). Complainant did

not say when it discovered Respondent’s Facebook page or how long it had been in operation. To describes her as “owner and CEO of Mi Cocina Food Truck 13 November 2011 to present.”. The Panel also notes a recent posting promoting “Mi Cocina’s 10th Annual Thanksgiving Tamales.”

understand the Facebook evidence, the Panel found Facebook references to Respondent and her “Mi
In a Procedural order, the Panel invited the Parties to address this evidence. When it responded to the

Procedural Order, Complainant did not offer any evidence or reason to doubt the apparent fact that

Respondent seems to have began her business under the “Mi Cocina Food Truck” business about ten years

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ago, other than to state that the link to the “Mi Cocina’s 10th Annual Thanksgiving Tamales” was inoperable.

The Panel issued a second Panel Order, instructing the Center to provide a copy of an excerpt from the

Facebook page to Complainant. Complainant did not respond to the second Panel Order.

This evidence is sufficient to support the Panel’s finding that it is more probable than not that Respondent

began her business many years ago in Colorado where Complainant does not do business and where it is unlikely that Respondent would derive any benefit from impersonating or otherwise targeting Complainant.

It is not dispositive that that Complainant owns a federal registration that predates Respondent’s adoption of

the Domain Name or her much earlier adoption of the tradename. Complainant may or may not have an
infringement claim,[1] but the question here is whether Respondent is targeting Complainant in a clear case of
cybersquatting. This is not such a case. By all appearances, Respondent has been running a real business
for many years and there is no evidence of cybersquatting intent. See Papa Gyros Inc. v. Registration
Private, Domains By Proxy, LLC/ GEORGIOS BATIOS, WIPO Case No. D2022-2256. This satisfies Policy
paragraph 4(c)(i). The Panel also notes that the evidence seems to indicate that for some 10 years
Respondent has been known in the Fountain, Colorado area by the name Mi Cocina. This satisfies Policy

[1] Although it is not for this Panel to adjudicate Complainant’s infringement claims, neither should the Panel imply that Complainant’s

4(c)(ii).

Complainant argues that, because laches is not generally recognized as a defense to valid claims under the

Policy, it does not matter how long Respondent has used “Mi Cocina Food Truck.” This misses the point.

The Panel is not finding that laches bars Complainant claim. Rather, the Panel is simply applying the text of the Policy paragraph 4(c)(i) and 4(c)(ii), and finding that it is more probable than not that, before notice of this

dispute, Respondent began using “a name corresponding to the domain name in connection with a bona fide

offering of goods or services” and that Respondent has been commonly known by a name corresponding to

the Domain Name.

Accordingly, the Panel finds that Complainant has not satisfied Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Complainant offers neither argument nor evidence to supply a basis for inferring that Respondent had knowledge of Complainant or its rights, or that Complainant was so well known that Respondent was probably aware of Complainant. Complainant does not allege that Respondent has engaged in any of the

conduct identified in Policy paragraph 4(b) as indicative of bad faith. Instead, to prove bad faith registration
and use, Complainant relies solely on the assertion that, because both Parties are located in the United

States, “the principle of constructive notice can be applied.” Notably, Complainant does not offer evidence that, apart from constructive notice, Respondent should have known of Complainant’s rights when she

registered the Domain Name.

The Panel rejects this contention.

The Panel does not consider it appropriate in the circumstances of this case to apply the concept of United
States constructive notice; even if it did, it would not ultimately assist Complainant.

Although the Policy makes no mention of constructive notice, the Panel has discretion to consider “any rules and principles of law that it deems applicable.” Rules 15(a). WIPO Overview 3.0 section 4.15. This

discretion is broad, and the Panel has the option to consider the potential relevance of constructive notice;

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here a few observations are relevant.

First, the UDRP does not supplant national law—either party is free to seek remedies or protection in the national courts—but the UDRP is, nonetheless, governed by its own law and rules. “Panels have broadly

noted that insofar as the UDRP system is designed to operate in a global context, while rooted in general
trademark law principles, in its own terms UDRP jurisprudence generally would not require resort to

particular national laws [. . .]” WIPO Overview 3.0, section 4.15. The “sole lodestar for a Panel must be the Policy… WIPO decisions have steadfastly maintained that the laws of any particular country do not apply to

the dispute,” Edmunds.com v. Ult. Search, WIPO Case No. D2001-1319; the UDRP “operates within its own

unique context,” Diet Center Worldwide v. Jason Akatiff, WIPO Case No. D2012-1609.

Second, United States law does not require that United States law be followed in UDRP proceedings. The

constructive notice provisions of the United States federal trademark law— the Lanham Act—apply to

proceedings pursuant to that law, but not to other proceedings under other laws. Moreover, in the United claims based on United States law. Consequently, when a United States court rules on a claim filed

pursuant to the United States Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. 1125(d), to

stop a transfer ordered by a UDRP decision, the United States court is not required to defer to a UDRP

decision. See Diet Center Worldwide, Inc. v. Jason Akatiff, WIPO Case No. D2012-1609 (see footnote 13,

discussing Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617, 624–26 (4th

Cir.2003)).

Given that the UDRP is supra-national law and, further, that United States law does not require adherence to

United States law when deciding UDRP cases, it is not required that the Lanham Act’s constructive notice

provisions be applied in UDRP proceedings between United States residents. Instead, under Rule 15(a), the

Panel has the option, but not the obligation, to consider constructive notice.

Third, and instructively, constructive notice is often not sufficient to resolve the UDRP questions it is called

on to address. For example, constructive notice of Complainant’s trademark is not notice “of the dispute”

under the Policy section 4(c)(i). The Zoological Society of San Diego, Inc. v. Affinity One, LLC, WIPO Case

No. D2006-1458. More generally—and of particular relevance here—the consequence in any given case of assuming constructive notice “may depend in part on the complainant’s reputation and the strength or distinctiveness of its mark, or facts that corroborate an awareness of the complainant’s mark.”

WIPO Overview 3.0, section 3.2.2. Where there is no corroborating evidence of cybersquatting or

targeting—which is the case here—constructive notice may not be sufficient to sustain Complainant’s

burdens of proof. FN Funding Inc. v. Nick Mofford, 80 Eighty, WIPO Case No. D2023-3537.

Even if Respondent here were charged with constructive notice, the Panel would nonetheless find that mere

notice of Complainant’s trademark rights is not alone sufficient to prove bad faith registration or use. There
is no evidence of targeting or impersonation. Furthermore, “mi cocina” which translates to “my kitchen” in

English has descriptive qualities which support the inference that Respondent adopted the Domain Name in good faith and without any intention to target Complainant. Finally, and fundamentally, Complainant has not alleged any conduct that satisfies any of the factors identified in Policy paragraph 4(b) or which otherwise

demonstrate cybersquatting intent or targeting of Complainant by Respondent; to the contrary, given the descriptive qualities of the term at issue here, the Panel believes that the evidence presented shows that Respondent has adopted such term independently of Complainant.

In its response to the first Procedural Order, Complainant also argued that Facebook’s removal of

Respondent’s Facebook page served as actual notice of Complainant’s rights and that, if Respondent was

continuing to use “Mi Cocina” on Facebook, then this was evidence of bad faith. As noted above, the Panel

finds the Facebook proceedings of limited, if any, relevance, especially with respect to the claim of actual

notice. Complainant had already sent Respondent written notice of its rights before it filed a report with

Facebook, so the Panel does see that Facebook’s removal decision adds anything. More importantly, the

question is whether Respondent acted in bad faith when she registered the Domain Name, which happened
before the Facebook dispute began.

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The Panel finds that Complainant has not satisfied Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, the Complaint is denied.

/Lawrence K. Nodine/

Lawrence K. Nodine

Sole Panelist
Date: December 9, 2023

trademark infringement claims are valid. Although Complainant has a federal trademark registration, under United States law, it cannot

claim “infringement” of its rights until it does business in a market area. Referring to the so-called “Dawn Donut Defense,” Professor

McCarthy explains: “While a federal registration grants a nationwide exclusive right, the federal registrant cannot obtain an injunction

against a local junior use until a likelihood of the registrant's expansion into that local area is proven, either by reputation or sales. This

is called a “Dawn Donut” defense asserted by a local junior user. The federal registrant has a nationwide right, but not a local remedy

until there is a likelihood of confusion caused by the localized use.” 5 McCarthy on Trademarks and Unfair Competition § 26:31 (5th ed.)