Industry Publications, LLC v.
Industry Magazine
Claim Number: FA0708001060670
PARTIES
Complainant is Industry Publications, LLC (“Complainant”), represented by Charles
F. Morgan, Esquire of Astrachan Gunst & Thomas, PC, 217
E. Redwood Street, Suite 2100,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <industrymagazine.com>, registered
with Network
Solutions, Inc.
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.
M.
Kelly Tillery, Esquire as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 10, 2007; the
National Arbitration Forum received a hard copy of the Complaint on August 13, 2007.
On August 10, 2007, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <industrymagazine.com>
domain name is registered with Network
Solutions, Inc. and that the Respondent is the current registrant of the
name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 20, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 10, 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
postmaster@industrymagazine.com by
e-mail.
A timely Response was received and determined to be complete on September 10, 2007.
A timely Additional Submission from Complainant was received and
determined to be complete on September 13, 2007
A timely Additional Submission from Respondent was received and
determined to be complete on September 18, 2007.
On September 20, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed M. Kelly
Tillery, Esquire as Panelist.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that:
Goods: “magazines relating to trends in fashion, modeling, culture, movies, theatre, acting, music, musicians, sports, travel and entertainment.”
3) from 2004 until April 24, 2007, it operated a website at <industrymagazine.com> for the benefit of its online customers and Internet users who may be interested in its magazine titled “Industry;”
4) the Registrar for <industrymagazine.com> was DomainDiscover with whom it renewed the registration for the domain each year beginning in 2004;
5) On April 24, 2007, it was informed that the Name Servers for <industrymagazine.com> were no longer pointing to its servers but instead to NS45.WORLDNIC.COM and NS46.WORLDNIC.COM;
6) On April 24, 2007, Alec Defrawy, telephoned its offices and demanded payment for the domain name <industrymagazine.com>;
7) Defrawy improperly registered its domain with Internet Solutions in the name of “Industry Magazine.”
B. Respondent
Respondent contends that:
1) During the calendar
years 2001-2002, Alec El-Difrawi, together with Mr. Armand Kulpa, co-founded a
magazine, entitled “Industry”
magazine” and El-Difrawi registered the Domain Name <industrymagazine.com>
on May 3, 2002;
2) the original Registrar was DomainDiscover with El-Difrawi listed
as the Administrative Contact and Billing Contact and Mr. Kulpa listed as a
Technical Contact;
3) El-Difrawi utilized the
disputed domain name in operating Industry
magazine;
4) El-Difrawi never
transferred the right to the use of, or ownership of, the Domain Name to any
individual or entity;
5) during
the calendar year 2005, Mr. Kulpa sold the magazine interest to Complainant
without the knowledge or consent of Respondent El-Difrawi;
6) he
notified Complainant of his claims to the magazine assets and to the disputed
domain name;
7) Difrawi
paid all registration and renewal fees from the original date of registration until
approximately the calendar year 2006.
Thereafter, without notice to Respondent El-Difrawi, Complainant paid
the renewal fee for the disputed domain name;
8) in
April 2007, Difrawi finally was successful in requiring the Registrar to honor
his legal title to the disputed domain name and he thereafter transferred the domain
name to a different Registrar, Network Solutions, and required the Registrar to
“point” the domain name to El-Difrawi’s designated server;
9) Respondent
did not establish another active website utilizing his domain name, rather
allowing the site to remain under construction pending a resolution of the
dispute over legal title to the magazine and the disputed domain name;
10) Complainant’s Trademark was registered September 19, 2006, many years after Respondent registered the disputed domain name and the trademark is generic and does not have an established secondary meaning in the community relating to Complainant’s mark;
11) Complainant was not incorporated until November 12, 2003, AFTER El-Difrawi registered the Domain Name. Industry Publications, LLC did not exist as a legal entity doing business until November 12, 2003.
C. Additional Submissions
1) Claimant
further contends that:
2) Respondent further contends that:
FINDINGS
1)
Complainant
has met its burden to prove by a preponderance of the relevant, credible, admissible
evidence that Respondent’s Domain Name is identical or confusingly similar to a
Trademark in which Complainant has rights.
2)
Complainant
has not met its burden to prove by a preponderance of the relevant,
credible, admissible evidence that Respondent has no rights or legitimate
interest in respect of the Domain Name.
3)
Complainant
has not met its burden to prove by a preponderance of the relevant,
admissible evidence that Respondent’s domain name has been registered and is
being used in bad faith.
It shall be
instructive to review a Chronology of the clearly undisputed
events.
DATE EVENT
5/3/02 - Domain
Name created <industrymagazine.com>
Registrar:
DomainsDiscover; Registrant: Industry Magazine
10/3/02 - Complainant Files “Intent to Use”
Application with USPTO for “INDUSTRY” Mark
7/22/03 - Armand
F. Kulpa files Fictitious Name Registration for “INDUSTRY MAGAZINE” with State
of
11/12/03 - Industry Publications, LLC
Incorporated
6/04 - Complainant’s First Uses “INDUSTRY”
in Commerce
9/19/06 - USPTO Registration for “INDUSTRY” Trademark
Issues to Complainant (Reg. No. 3,145,837)
4/24/07 - Domain Name “Updated” <industrymagazine.com>
Registrar:
Network Solutions, Inc.; Registrant: Industry Magazine
This case is troubling in that Network Solutions, Inc. identifies
“Industry Magazine” as the Registrant and thus Respondent therein, but all
filings herein on behalf of said Respondent are by an individual “Ayman
El-Difrawi a/k/a Alec Dufrawy”, who, in an Affidavit, claims to have at one
time been a “majority interest holder” in a partnership with “Armand Kulpa and
others” which “founded Industry Magazine” in 2002.
The website <domaintools.com> provides a convenient “Domain
History” of Domain Names. Although the
parties have not included in the record copies of documents from <domaintools.com>
regarding the Domain Name in question, the Panel may take judicial notice of
such histories.
The history of this Domain Name reflects that as of April 21, 2007, the
Registrant for the Domain Name was “Industry Magazine” with an Administrative
Contact of “Dufrawy Consulting/Dr. A.A. Dufrawy and a Technical Contact, Zone
Contact of “Industry Magazine – Armand Kulpa.”
The history indicates that the Domain Name was created on May 3, 2002
and that the Registrar therefore was Domaindiscover.
The History next reflects that on April 24, 2007, the Domain Name Registrar
was changed to Network Solutions, LLC with the Registrant still “Industry
Magazine” and the Administrative, Technical Contact: Industry Magazine –
H45EW9CR42B@networksolutionsprivate registration.com. No further name or address for the Registrant
Administrative Contact or Technical Contact are recorded. As this was a new Domain Name Registrar, the
Record indicates that the Domain Name was “created” on that date, April 24,
2007. The Domain Name Servers for the
Domain Name when the Registrar was Domain Discover were: NS1.LNHI.net and
NS2.LNHI.net. The new
Registration with Network Solutions, LLC indicates the Domain Servers are:
NS45-worldnic.com 205.178.190.23 and NS4-worldnic.com 205.178.189.23.
Neither the <domaintools.com> history of the Domain Name nor any
submission by the parties herein sufficiently explain precisely how or why the
Domain Name was transferred from Registrar Domain Discover to Registrar Network
Solutions, LLC and how the Administrative and Technical Contacts were also
changed.
Thus, based upon this record, this Panel is unable to determine whether
as claimed, “Ayman El-Dufrawy a/k/a Alec Dufrawy” is, in fact, the Respondent
or a representative of Respondent “Industry Magazine” which is not identified
as any particular type of legal entity nor is this Panel able to determine how
the Registration was changed and if same was proper under ICANN Procedures
and/or other applicable law.
To a great extent, this dispute is in reality one over the legal title
to the Domain Name and is a matter of contract and/or tort law under Florida
(or other) State Law between the parties herein and/or others, such as Mr. Kulpa,
Ralph Edward Bell, Domaindiscover and/or Network Solutions, Inc. See
Love v. Barnett, FA 944826 (Nat. Arb. Forum, May 14, 2007); Hachette Filipacci Media US, Inc. v. Urthere
Prods., Inc., D2002-0143 (WIPO, May 30, 2002); Frazer Winery, LLC v. Hernandez, FA 841081 (Nat. Arb. Forum, Jan. 2,
2007). This Panel is not
empowered to decide legal title “ownership” of this Domain Name, only to
whom it should be registered and it can only be transferred from its
current Registrant, the Respondent or cancelled if Complainant proves all three
prongs of the UDRP Policy by a preponderance of the credible, admissible
evidence.
Under all of these circumstances, and considering the real nature of
this dispute, this Panel is unable to grant the affirmative relief requested by
Complainant as there are simply too many legal and/or factual issues which are
far beyond the ken of an ICANN Domain Name Arbitration Panel.
Complainant’s initial failure to disclose the history of this dispute
is somewhat disturbing and telling.
Complainant’s failure to submit Affidavits from Matthew Gull, Armand F.
Kulpa or any other and/or any documentation of the alleged sale of the business
from Mr. Kulpa to Complainant makes finding in favor of Complainant on the
Second and Third prongs of the UDRP Policy difficult, if not impossible.
DISCUSSION
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.
Complainant
asserts rights in the INDUSTRY mark through ownership of a Trademark Registration
with the USPTO (Reg. No. 3,145,837 issued September 19, 2006, filed October 3,
2002). The Panel finds that
Complainant’s Trademark Registration sufficiently establishes Complainant’s
rights in the mark for the purposes of Policy ¶ 4(a)(i).
See Reebok Int’l Ltd. v.
Complainant asserts that the <industrymagazine.com> Domain Name is
confusingly similar to Complainant’s INDUSTRY mark as the disputed domain name
contains Complainant’s mark in its entirety with the addition of the common
term “magazine,” which has an obvious relationship to Complainant’s business,
as well as the generic top-level domain (“gTLD”) “.com.” These alterations to Complainant’s mark do
not adequately distinguish the disputed domain name under Policy ¶ 4(a)(i). See Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (<hoylecasino.net> domain name is
confusingly similar to the complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which the
complainant is engaged, does not take the disputed domain name out of the realm
of confusing similarity); see also Gillette Co. v. RFK
Assocs., FA 492867 (Nat.
Arb. Forum July 28, 2005) (the additions of the term “batteries,” which
described the complainant’s products, and the generic top-level domain “.com”
insufficient to distinguish the respondent’s <duracellbatteries.com> from
the complainant’s DURACELL mark).
Under these circumstances, the Panel finds that the Domain Name <industrymagazine.com> is confusingly similar to Complainant’s “Industry” Mark and thus the Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is confusingly similar to a Trademark in which Complainant has rights.
By way of Affidavits, an apparent
representative of Respondent, has submitted sufficient evidence to establish
that Respondent at least had some involvement in the use of the Domain Name for
a legitimate purpose as early as May of 2002, before Complainant filed an “Intent
to Use” Application with the USPTO on October 3, 2002 and long before
Complainant’s acknowledged First Use of the Mark in commerce in June of
2004. In light of the dispute it is also
not unreasonable or bad faith for Respondent not to use the site actively until
resolution. Under these circumstances,
Complainant has not met its burden to prove by a preponderance of the
relevant, admissible evidence that Respondent has no rights or legitimate
interest in respect to the Domain Name.
Respondent, through Affidavits, has
established that it or representatives acting on its behalf,
registered the Domain Name originally on May 3, 2002 in good faith for use in
commerce in connection with a magazine.
Complainant has produced no evidence to indicate that the original
Registration was in bad faith nor any sufficient, credible evidence to
establish that the current or any past use was done in bad faith. While there is some evidence indicating that
there were discussions regarding the sale of the Domain Name, such exchanges
between parties who were apparently at one time in business together and also
apparently have a dispute over the ownership of this asset of the business or
the business itself, do not in and of themselves establish bad faith use or
registration.
As indicated previously above, this is clearly
really a commercial dispute between former partners over the ownership of one
asset of a past or existing business and it is simply not the type of dispute
that this Panel is empowered to resolve.
The Parties best take this dispute to
litigation in another, more appropriate forum.
DECISION
Complainant has failed to establish all three elements required under
the ICANN Policy. The Panel concludes
that relief shall be DENIED.
Accordingly, it is Ordered that Complainant’s
Complaint is DISMISSED.
M. Kelly Tillery,
Esquire, Panelist
Dated: October 4, 2007
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