Azkar H. Choudhry v. Saeed Iqbal
Claim Number: FA0203000105933
PARTIES
Complainant is Azkar H. Choudhry, Houston, TX (Complainant). Respondent is Saeed Iqbal, Fresno, CA (Respondent).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <gupshup.org>, registered with DomainSite.
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.
ROBERT T. PFEUFFER, Senior District Judge
(Ret.).
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the Forum) electronically on March
18, 2002; the Forum received a hard copy of the Complaint on March 21, 2002.
On March 18, 2002, DomainSite
confirmed by e-mail to the Forum that the domain name <gupshup.org> is registered with DomainSite and that the
Respondent is the current registrant of the name. DomainSite has verified that Respondent is bound by the DomainSite
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 March 25, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
Commencement Notification), setting a deadline of April 15, 2002 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 postmaster@gupshup.org by e-mail.
A timely Response was
received and determined to be complete on April 15, 2002.
Thereafter, on April 22,
2002, Complainant filed an additional submission which was transmitted to the
Panel along with the Original Complaint and Original Response.
On April 26, 2002, pursuant
to Complainant’s request to have the dispute decided by a single-member Panel,
the Forum appointed ROBERT T. PFEUFFER as Panelist.
RELIEF SOUGHT
Complainant requests that the
domain name be transferred from Respondent to Complainant.
PARTIES= CONTENTIONS
A.
Complainant:
The registration of the name
GUPSHUP violates policy Paragraph 4(a) (i) in that the name is identical or
confusingly similar to the name used by Complainant in the past because:
1. GUPSHUP
is Complainant’s common law service mark.
2. Respondent
knew the name it registered was identical to Complainant’s service mark.
3. In an additional submission, Complainant states the term
GUPSHUP is a viable service mark and not a generic word in the English
language.
The registration and use was
in bad faith in violation of policy paragraph 4(a) (iii) because:
1.
Respondent
had been a member of the public that regularly used the GUPSHUP site and that
Complainant had terminated the Respondent’s membership due to misconduct.
2.
Respondent
acted in bad faith when he registered the name he knew had been previously held
by Complainant.
3. Actions taken by Respondent were a bad faith attempt to
disrupt the business of Complainant.
3.
That
a violation of policy paragraph 4(b)(iv) occurred when Respondent directed
customers away from Complainant and to his own site, further demonstrating his
bad faith.
The registration is in violation of policy Paragraph 4
(a) (ii) because:
1. Respondent
had no rights or legitimate interests in the domain name GUPSHUP.
The registration is in violation of policy Paragraph 4
(a)(ii) because:
1.
Respondent
had no rights or legitimate interests in the domain name GUPSHUP.
2. Respondent is commonly known by <desihome.org.>and not
by the disputed domain name. See Policy paragraph 4(c)(ii).
B.
Respondent:
Contends he has done nothing
wrong, has violated no Policy and has every right to use the name that
Complainant allowed to become a lapsed domain name by his own inactions and
inattention to business. His Response is
well documented as to the factual and legal allegations made in the
Complaint. He attached to his Response
addendums 1 through 5 including a statement styled Affidavit attached as
Addendum 4, but which is not supported by an oath. In making this decision the writer has carefully examined the
content of each of these Addendums.
C. Additional Submissions
Complainant has filed additional
submissions which include numerous attachments of evidence A through M which he
contends establish his rights to the domain name in question. Each item
attached to the Additional Response has been carefully reviewed to determine if
they have any bearing on the disputed facts in the case, and whether, as a
matter of law, they support his Complaint. In addition, Complainant asserts
that Respondent has not raised any issue that was not fully and effectively
addressed in the petition nor has he supplied any evidence of false statements
contained therein.
FINDINGS
Complainant contends that GUPSHUP is
their common law service mark. See British
Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the UDRP does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names and applying the UDRP to unregistered trademarks and service marks); see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not
require Complainant to demonstrate exclusive rights, but only that Complainant
has a bona fide basis for making the complaint in the first place); see also Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (An account of long and substantial use of the
said name [<keppelbank.com>] in connection with its banking business, it
has acquired rights under common law”).
The domain name <gupshup.org>
is identical to Complainant’s mark. See ViewSonic Corp. V. Informer Assoc. Inc.,
D2000-0852 (WIPO Sept. 6, 2000) (finding that the domain names
<viewsonic.net> and <viewsonic.org> are identical to the
Complainant’s VIEWSONIC mark).
Complainant further asserts in the additional submission that
GUPSHUP is a viable service mark and not a generic word in the English
language. See Limco, Inc. v Rarenames,
FA 99693 (Nat. Arb. Forum Nov. 27, 2001) (finding that rather than just
claiming that a term is generic, Respondent should provide further evidence of
genericism, considering "words such as 'crew', 'playboy', 'quicktime' and
'scholastic' have been granted trademark registrations that have been protected
in domain dispute cases").
Rights and Legitimate Interests Policy & 4(a)(ii).
Complainant contends to be the former
registrant of the disputed domain name.
See American Anti-Vivisection
Soc’y v. "Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov.
6, 2000) (finding that Complainant’s prior registration of the same domain name
is a factor in considering Respondent’s rights or legitimate interest in the
domain name).
Complainant contends that Respondent is diverting his customers to
Respondent=s website. Such act does not provide Respondent with rights or
legitimate interests under Policy & 4(a)(ii). Using Complainant’s mark to
divert customers is not a bona fide offering of goods under & 4(c)(i) nor
is it a noncommercial or fair use under Policy & 4(c)(iii). See
Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)
(finding no rights or legitimate interests where Respondent diverted
Complainant’s customers to his websites); see
also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9,
2001) (finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally and misleadingly diverting users away from
Complainant's site to a competing website); see
also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16,
2001) (finding no rights or legitimate interests when Respondent is using a
domain name identical to Complainant’s mark and is offering similar services); see also Vapor Blast Mfg. Co. v. R & S
Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that
Respondent’s commercial use of the domain name to confuse and divert Internet
traffic is not a legitimate use of the domain name).
Additionally, Complainant contends that Respondent is
commonly known by <desihome.org> not by the disputed domain name under
Policy & 4(c)(ii). See Great S. Wood Pres., Inc. v. TFA Assocs.,
FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not
commonly known by the domain name <greatsouthernwood.com> where
Respondent linked the domain name to <bestoftheweb.com>.
Registration and Use in Bad Faith Policy paragraph 4(a)(iii).
Complainant contends that
Respondent acted in bad faith by registering his previously held domain name,
which lapsed by accident. See InTest Corp. v. Servicepoint, FA
95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has
been previously used by Complainant, subsequent registration of the domain name
by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc.,
D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took
advantage of Complainant’s failure to renew a domain name).
Complainant’s evidence
supports a finding that Respondent acted in bad faith pursuant to Policy
Paragraph 4(b)(iv) by directing his customers to Respondent’s own site. See Drs. Foster & Smith, Inc. v Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the Respondent directed Internet users seeking
Complainant=s site to its own website for commercial gain).
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.
Identical and/or Confusingly
Similar
The domain name is identical
to the Complainant’s service mark GUPSHUP.
Rights or Legitimate
Interests
The Respondent has no rights
or legitimate interests in respect to the domain name.
Registration and Use in Bad
Faith
The Respondent is found to
have registered and used the domain name in bad faith.
DECISION
The domain name registration
for <gupshup.org> shall be transferred to Complainant
forthwith.
ROBERT T. PFEUFFER, Sole
panelist
Dated: May 3, 2002
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