The Youphoria Company, LLC v. Frank Trujillo
Claim Number: FA0707001045139
Complainant is The Youphoria Company, LLC (“Complainant”), represented by Bryce
J. Maynard, of Buchanan Ingersoll & Rooney PC,
1737 King Street Suite 500, Alexandria, VA 22314. Respondent is Frank Trujillo (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youphoria.com>, registered with Godaddy.com, Inc.
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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 17, 2007.
On August 16, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <youphoria.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 17, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
An untimely Response was received on September 18, 2007. The Response was deemed deficient pursuant to ICANN Supplemental Rule 5 because the electronic copy was received after the deadline.
On September 26, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In its Complaint, Complainant contends the following:
- Complainant is the owner of common law rights in the trademark YOUPHORIA. Complainant has used this mark in numerous presentations to business partners and customers. Complainant has filed a trademark application with the United States Patent and Trademark Office for this mark. Complainant is also the owner of the trade name “The Youphoria Company.”
- The domain name <youphoria.com> is essentially identical to Complainant’s YOUPHORIA service mark. This identity creates a legal presumption of a likelihood of confusion.
- Respondent has no rights or legitimate interests with respect to the domain in dispute. The <youphoria.com> domain name currently directs to a web page containing a number of unrelated links. There is a link at the top right hand corner stating “youphoria.com is for sale at Afternic.” Clicking on this link directs the user to a web page offering the <youphoria.com> domain name for sale for the price of $100,000. The warehousing of a domain name with the intent to sell the domain name to the highest bidder does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). There is no evidence that Respondent has ever been known by the name “Youphoria.” The only conceivable purpose for which Respondent could have registered the domain name is to warehouse it with the intention of either confusing consumers who are looking for the official web site of a party with trademark rights in the term YOUPHORIA or selling the domain name to the highest bidder. There is no evidence that Respondent is making any noncommercial or fair use of the youphoria.com domain name. It is clear that Respondent registered this domain name with the sole intention of selling it to a party with legitimate rights in the YOUPHORIA trademark.
- An employee of Complainant spoke to Respondent on June 4, 2007 via telephone. Respondent stated that he was seeking $100,000 for the domain name and had purchased the domain name with the intent of selling it to a large company “like Coca-Cola or Nike.” Therefore, there is no genuine issue of fact as to Respondent’s lack of legitimate interest in the <youphoria.com> domain name.
- The evidence indicates that Respondent has registered and is using the <youphoria.com> domain name in bad faith. There are a number of ways in which bad faith can be established, including circumstances indicating that the domain name has been registered “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.” ICANN Policy Paragraph 4(b)(i). In the present case, Respondent purchased the domain name with the sole intention of selling the domain name for an exorbitant price, and Respondent has admitted the same in his conversation with an employee of Complainant on June 4, 2007. There is no indication that Respondent has ever made a legitimate, bona fide use of the domain name. Respondent has blocked the ability to view archived versions of the <youphoria.com> web site through the use of the robots.txt program. The website currently visible at <youphoria.com> is virtually identical to dozens of other websites, all featuring the same text and graphics, none of which has anything to do with a legitimate business. Many of these other web sites also incorporate well-known trademarks, such as <toyotaforsale.com> and <gilettefusion.com>. These websites are merely “place holders,” none of which engage in a bona fide offering of goods and services. The registration and warehousing of such domain names without legitimate use has been found to constitute violation of the UDRP policy.
In his Response, Respondent contends as follows:
- Complainant presents no evidence that he or she is the owner of common law rights in the trademark YOUPHORIA. There is no indication as to when or where Complainant first began offering products or services. All we have before us is the Complainant’s ASSERTION that he/she is the owner of common law rights in the trademark YOUPHORIA. Complainant has filed a trademark application for the use of YOUPHORIA with the United States Patent and Trademark Office. This application for trademark was made just a little over three months ago, on May 16, 2007. Complainant also is the owner of The Youphoria Company LLC, a limited liability corporation. Respondent’s own investigation concludes that registration took place in Delaware, with an incorporation date of April 18, 2007—less than one month prior to Complainant’s application for trademark. Respondent ran a search on the Yahoo.com search engine. In the subject category, Respondent “typed in” the letters Y O U P H O R I A. The inquiry returned 2,300 results. He then began the process of examining one result after another to see whether any of them might resolve directly to Complainant’s YOUPHORIA business establishment, whether any of the results might reference “software development, product development, and web-based social networking and collaboration,” as referenced in Complainant’s trademark application, or any reference whatsoever, on any website, to Complainant’s business. This proved to be a most time-consuming process, but after a careful analysis of the top 100 website results, Respondent found no evidence as to the existence of Complainant’s business. This struck him as highly unusual—especially in consideration of Complainant’s alleged common law trademark ownership. Complainant must prove that his/her YOUPHORIA mark has acquired a secondary meaning in order to demonstrate that it has enforceable trademark rights.
- Respondent’s registration of Youphoria.com pre-dates Complainant’s respective trademark application by more than five and a half years. Significantly, it has been found that a domain name should not be transferred where a respondent’s registration of the domain name pre-dates the filing of an application for trademark registration by a complainant. [In Plan Express v. Plan Express, WIPO D2000-0565, July 17, 2000].
Respondent concedes that Complainant’s mark and the
disputed domain name are substantially similar, but contends there is no clear
association of the term “Youphoria” to the Complainant’s business interest of “software
development, product development, and web-based social networking and
collaboration services” that creates a position above any of the other
registered trademark holders who incorporate “Youphoria” in their
mark—YogaYouphoria.com, for example. There are numerous businesses throughout
- Respondent was unaware of Complainant’s common law trademark ownership at the moment Respondent registered the domain name. Prior to the time Youphoria.com was registered, Respondent conducted a trademark search. No reference was found to the existence of any such mark in the U.S. Trademark database. Complainant has provided no evidence that his/her descriptive name has acquired a secondary meaning as generally understood in trademark law. Any confusion that may result from the obvious similarity can in no way be deemed the responsibility of Respondent.
- Respondent hereby states and affirms that he indeed has a legitimate interest in <youphoria.com>. Respondent was first to register the “.com” name, wherein the standard is “first come, first served.” Respondent had every reason to believe he registered and re-registered this domain name in good faith over the course of the past several years. Respondent is a writer, lyricist and wordsmith. For approximately the past five years he has worked diligently on a book entitled Youphoria! Invented Names for Inventive People, which at present is approximately 70% to 75% complete. Pending available funding, both a companion website to the book (which is presently in the concept development stage) and a generic word-related website (specializing in multiple language neologisms and unique words and phrases) will be brought on-line.
- At no time has it been Respondent’s intent to misleadingly divert consumers or to tarnish the Complainant’s trademark. Until being advised of the Complaint, Respondent was completely unaware that any such business existed under the YOUPHORIA mark. Respondent registered the disputed domain name approximately five and one-half years prior to the Complainant’s trademark filing. Until mid-August, 2007, Respondent had never heard of Complainant’s business.
- The disputed domain name was not registered in bad faith, nor was it registered for purposes of selling it to the Complainant.
- Respondent agrees with Complainant’s claim that the disputed domain name was/is placed for sale at Afternic.com, one of several domain name aftermarket sites currently available on the Internet. Respondent did not know, until approximately three weeks ago, when he was so informed, that placing a name or names for sale could well result in a determination of bad faith registration. What precipitated Respondent’s “For Sale” listings was a downturn in business activity at the same time he was attempting to “grow” his business, thereby necessitating an increased need for capital.
- YOUPHORIA is most definitely not a dictionary word. It is intellectual property, hence “goods” and “chattel.” Although Respondent has “coined” many new or novel words and phrases over the years, he cannot claim credit for coming up with “Youphoria.” He very much liked the name the moment it first “popped” into his head. Immediately, he knew he had something. But according to his notes at the time, a Yahoo™ search nevertheless confirmed that there existed very few, some 55 or 60 “hits” for the recently coined word. Also, it seems youphoria.net had already been registered, apparently as early as 1999. Respondent can claim credit for having arrived at the word “Youphoria” entirely on his own, but he cannot in any way say he was the very first to hit upon it.
- Respondent’s registration of the disputed domain name several years prior to Complainant’s application for a mark renders Complainant’s reliance on its mark irrelevant. Complainant has not established bad faith registration as required in Policy ¶ 4(a)(iii).
C. Additional Submissions
There were no additional submissions from the parties.
Complainant failed to establish that it has rights in the YOUPHORIA mark, that Respondent lacks rights in the disputed domain name, and that Respondent registered the domain name in bad faith, particularly having in mind that Respondent’s domain name registration predates Complainant’s application for the YOUPHORIA mark by more than five years. Accordingly, the relief of transfer of the domain name to Complainant is denied.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Before addressing the merits, the Panel must consider whether or not to admit Respondent’s Response, which was submitted just one day after expiration of the deadline. The Panel decides that it will in the interest of justice, because Respondent is acting pro se, and since no prejudice has been caused to the Complainant by this short delay. See Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-0040 (WIPO, Mar. 23, 2000) (finding that no prejudice had been caused to the Complainant by a delay of three days and, in the interest of justice, that the Response should be considered).
Respondent contends that its registration of the <youphoria.com> domain name in 2002 predates Complainant’s rights to the YOUPHORIA mark. However, this fact in itself does not allow inferring anything against Complainant. Under the Policy Complainant must only establish rights to the mark that need not predate Respondent’s registration of the disputed domain name under an analysis of Policy ¶ 4(a)(i). See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP Policy does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)).
It is evident that the disputed domain name is identical to Complainant’s YOUPHORIA mark. The disputed domain name contains the YOUPHORIA mark in its entirety and adds the “.com.” gTLD, an irrelevant addition under the Policy,. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis”).
Complainant submits a printout of a search of the TARR database, as evidence that on May 16, 2007 it has filed a trademark application for the YOUPHORIA mark with the USPTO, covering software development, product development, and web-based social networking and collaboration services in international class 45. However, a trademark application does not in itself confer rights in a mark.
Complainant also asserts that it is also the owner of the trade name “The Youphoria Company.” However, a trade name is the name of a business, and is not generally a trademark. Trade names in themselves are not a basis for a complaint under the UDRP. See SGS Société Générale de Surveillance S.A. v. Inspectorate, D2000-0025 (WIPO, Mar. 17, 2000) (finding that the Policy and Rules refer only to identity or similarity to trademarks or service marks in which a complainant has rights, and that no reference is made therein to tradenames in which a complainant has rights).
Complainant also asserts it is the owner of common law rights in the trademark YOUPHORIA, and that it has used this mark in numerous presentations to business partners and customers. However, Complainant does not submit any evidence whatsoever in support of its assertion. In order to establish common-law or unregistered trademark rights a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services, i.e. that the name has acquired secondary meaning. As in Walsh Bishop Associates, Inc. v. Honggi, Honggi Kim, FA 907521 (Nat. Arb. Forum Mar. 6, 2007), in the present case the complainant has failed to present any evidence – such as amount of sales, advertising, consumer surveys or media recognition – showing that the YOUPHORIA name has achieved sufficient secondary meaning, and hence trademark rights, in respect of any goods or services; see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Therefore, the Panel is not satisfied that Complainant has rights in the YOUPHORIA mark, and must conclude that Complainant failed to establish the first element of the Policy.
Respondent has failed to submit any evidence that he made demonstrable preparations to use the <youphoria.com> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
However, Respondent alleges that its rights to the <youphoria.com> domain name predate Complainant’s purported rights to the YOUPHORIA mark. Respondent registered the disputed domain name on February 7, 2002, and alleges that Complainant has submitted no evidence that it used the YOUPHORIA mark prior to that time. As seen above, Complainant has not submitted evidence that its rights predate Respondent’s registration of the domain name, or given any details about the date on which it began using YOUPHORIA as a trade name, or presented the Panel with any description of this alleged use. Therefore the Panel must conclude that in the context of the present proceeding Respondent’s rights to the <youphoria.com> domain name predate Complainant’s rights to the YOUPHORIA word, and that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that the respondent does have a legitimate interest in the domain name where the complainant applied for registration of the mark after the respondent registered the domain name and the complainant has not proven any earlier use of the mark); see also Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before the complainant had established rights in its alleged mark).
Complainant also failed to establish the second element of the Policy.
Respondent’s registration of the <youphoria.com> domain name predates Complainant’s alleged rights to the YOUPHORIA mark by more that five years. Therefore, the Panel concludes that Respondent could not have registered the <youphoria.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding no bad faith registration and use where the respondent registered the disputed domain name before the complainant began using the mark); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).
Respondent alleges it did not register or use the <youphoria.com> domain name in bad faith because at the time of the domain name registration he had no knowledge of Complainant or its alleged rights to the YOUPHORIA mark. Respondent asserts that it conducted an electronic trademark search prior to registering the disputed domain name, and did not find any trademark registrations for the YOUPHORIA mark. Complainant and Respondent do not operate in the same line of business, and Respondent contends it has never heard of Complainant. There is no evidence on the record disproving Respondent’s assertions.
The Panel believes that Respondent’s lack of actual or
constructive knowledge of Complainant and its alleged rights to the YOUPHORIA mark
allows the Panel to infer that Respondent did not register or use the <youphoria.com> domain name in
bad faith pursuant to Policy ¶ 4(a)(iii).
In sum, Complainant also failed to establish the third element of the Policy.
Complainant has failed to establish any of the elements required under the ICANN Policy. Therefore, the Panel concludes that relief shall be DENIED.
Roberto A. Bianchi, Panelist
Dated: October 10, 2007
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