Jeffrey Tober and Sara Oxana Korsunova Skeat v. Ixis
Claim Number: FA0710001094101
Complainant is Jeffrey Tober and Sara Oxana Korsunova
Skeat (“Complainant”), represented by
Jeffrey Tober, Falcon Cottage, Village
Road, Denham, Uxbridge UB9 5BE.
Respondent is Ixis (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aprov.com>, registered with Tucows Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 17, 2007.
On October 15, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <aprov.com> domain name is registered with Tucows Inc. and that the Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 October 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 12, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on November 13, 2007, however only an electronic copy of the Response was received. Since no hard copy of the Response was received, the Response is not in compliance with ICANN Rule #5(a).
On November 20, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant makes the following assertions:
1. Complainant states that they are a “premier escort service in
2. Complainant has been carrying out the aforementioned business on the internet under <aprov.com> and <agency-provocateur.com> domain names.
3. Complainant has common law trademark rights in APROV.
4. The domain name registered by Respondent, <aprov.com>, is confusingly similar to Complainant’s common law trademark APROV incorporating the entirety of Complainant’s mark with the addition of the top-level indicator “.com.”
5. Respondent has no rights or legitimate interest in respect of the <aprov.com> domain name, using the domain name as a linkspam site making commercial gain from Complainant’s goodwill and reputation in the escort services market.
6. Respondent registered and uses the <aprov.com> domain name in bad faith.
1. The domain name <aprov.com> as well as <agency-provocateur.com> were originally registered and owned by Respondent.
2. Complainant has conspired to steal both the aforementioned domain names.
3. Complainant is involved in criminal activities including money-laundering, living off immoral earnings and under payment of income tax.
There is doubt as to the existence and nature of business of Complainant.
Complainant has not met even a minimal burden of proof regarding common law rights in the words APROV and Agency Provocateur.
Complaint fails first hurdle for protection under UDRP.
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.
Since no hard copy of the Response has been received, the Response is not in compliance with ICANN Rule #5(a). However, the Response is from Respondent as identified in the Complaint and the Panelist has decided to consider the Response in his decision. See Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”).
Complainant states that they have provided, as Annex A, print-outs of <www.aprov.com> and <www.agency-provocateur.com>. However, Annex A only contains a print out of <agency-provocateur.com> dated 10/12/2007. The other document in Annex A is a print out of <aprov.com> taken from Web Archive.org dated 17/06/2007 (this is the same document provided as Annex D (see below)). The domain name subject of this dispute is <aprov.com> and Complainant has provided no evidence of the current state of the domain name or any current website associated with <aprov.com>.
Therefore the Panelist took it upon himself to review the disputed domain name <aprov.com> and its associated domain name <agency-provocateur.com>. At the time of preparing this decision, the disputed domain name <aprov.com> leads to an inactive, unavailable website and the other domain name from which Complainant alleges to have been doing business <agency-provocateur.com> since 2002 is under construction as per the message provided by the Registrar Network Solutions.
This fact, taken together with the grave assertions of Respondent as to the nature of the activities in which Complainant is engaged, are sufficient to bring a shadow of doubt as to the identity of the Complainant. Complainant has provided no additional submission refuting the assertions made by Respondent.
Complainant has the responsibility of proving that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. See Policy 4(a)(i).
Therefore it is necessary to ascertain whether Complainant has rights in any mark before determining whether that mark is identical or confusingly similar to the disputed domain name <aprov.com>. Complainant asserts that they have rights in the mark APROV. Complainant does not assert any rights by virtue of registration, rather Complainant asserts that they have common law rights in the mark APROV. Complainant claims that they have operated the sites <www.aprov.com> and <www.agency-provocateur.com> since as early as 2002 having registered the domain names in or about 2001. In support of this, Complainant has provided a print-out of the <aprov.com> domain dated June 17, 2007 as Annex D (this is the same document provided in Annex A (see above)).
Indeed, registration is not the only permissible source of trademark or service mark rights under the UDRP. To quote the much quoted in UDRP Panel Decisions McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000), the ICANN dispute resolution policy is "broad in scope" in that "the reference to a trademark or service mark 'in which the complainant has rights' means that ownership of a registered mark is not required - unregistered or common law trademark or service mark rights will suffice" to support a domain name complaint under the policy; also see MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing 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"). Panels interpreting the UDRP have consistently held that the Policy affords protection to those having common law trademark rights as well as to those having rights in registered trademarks. See Cedar Trade Assocs., Inc., v. Ricks, FA 93633 (Nat. Arb. Forum Feb. 25, 2000); see also Bennett Coleman & Co. Ltd. v. Lafwani, D2000-0014 (WIPO Mar. 11, 2000) ("it is this reputation from actual use which is the nub of the complaint, not the fact of registration as trade marks.").
Many of the cases in which common law trademark rights are asserted have involved personal names that have, through use and publicity, acquired the distinctiveness necessary to become trademarks or service marks: see Stam v. Cohen, D2000-1061 (WIPO Nov. 4, 2000); see also MPL Communications Ltd. v. Hammerton, FA 95633 (Nat. Arb. Forum Oct. 25, 2000); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000); see also Estate of Francis v. Magidson Fine Art, Inc., D2000-0673 (WIPO Sep. 27, 2000); see also Adu v. Quantum Computer Servs. Inc., D2000-0794 (WIPO Sep. 26, 2000); see also Rattner v. BuyThisDomainName, D2000-0402 (WIPO July 3, 2000); see also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000); see also Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the complainant have rights in a registered trademark and that it is sufficient to show common law rights); see also Diamond v. Goldberg, FA 237446 (Nat. Arb. Forum Apr. 5, 2004); see also Bibbero Systems, Inc. v. Tseu & Assoc., FA 94416 (finding common law rights in the mark BIBBERO as the complainant, Bibbero Systems, Inc. had developed brand name recognition with this term by which the complainant is commonly known).
Just as in the above cited cases, Complainant may enjoy common law trademark rights in APROV if that service name has acquired a "secondary meaning." Secondary meaning means that although a name (whether a personal name or a product or service name) or a design is not a registered mark, the public has come to associate that name or design with a particular person or company or goods or services. Secondary meaning is defined as "the consuming public's understanding that the mark, when used in context, refers not to what the descriptive word ordinarily describes, but to the particular business that the mark is meant to identify." Secondary meaning therefore refers to the manner in which a consumer identifies a specific business or a business's reputation by a particular trademark. By secondary meaning, one is referring to the capacity of a mark in the relevant consumer marketplace to identify and distinguish a particular business or source.
However, in the case at hand, Complainant, in order to prove their common law rights, has only provided a print-out of an archived website provided by the WayBackMachine at <archive.org>. This print-out is publicly available. Complainant does state that APROV is the first result from a Google search for the term “aprov,” which is indeed correct but then Complainant fail to identify themselves with the search result which is a business called “AProv” using the domain names <aprovlondonescorts.com> and <aprov.co.uk>. Complainant has failed to provide any evidence, strictly under their control, of their registration and use of the disputed domain name. Complainant has failed to submit any evidence such as office materials (business cards, invoices, order forms, etc.) showing their use of the mark APROV or for example the registration and ownership of a company under the name APROV. Indeed they have failed to provide any evidence as to their continuous use of the term APROV during the period from 2002 up until the moment in 2007 when Respondent registered the <aprov.com> domain name.
All of the above is necessary in order to demonstrate the mark's secondary meaning and thereby establish Complainant's enforceable rights in the mark APROV. Complainant has provided no evidence of its services or that which may serve to distinguish the services of Complainant from those of others. It was stated in All Packaging Mach. Supplies, Corp. v. Crystal Flex Packaging Corp., D2002-0383 (WIPO July 17, 2002), "although the phrase may be descriptive, it is entitled to protection as a mark based on 20 years of use. As a result of that long use, there is a presumption that the mark has acquired distinctiveness, and Respondent has presented no evidence to rebut that presumption."
This Panel does not doubt that common law rights are equally capable of protection under the Policy but the Panel is forced to conclude that Complainant has not met its burden of proof for the purpose of establishing common law trademark rights in the word APROV.
For this reason, Complainant has not satisfied paragraph 4(a)(i) of the Policy.
Therefore, failing application of Policy ¶ 4(a)(i), there is no need to analyze the other two elements of the Policy regarding the <aprov.com> domain name for the reason that Complainant must satisfy each and every element. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because complainant must prove all three elements under the Policy, complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary); see also 01059 GmbH v. VARTEX Media Marketing GmbH/Stefan Heisig, D2004-0541 (Wipo Sept. 10, 2004) (holding that the Policy requires that the complainant prove all elements of paragraphs 4(a)(i-iii) of the Policy. Thus, since the complainant has failed to prove 4(a)(i), the panel need not discuss whether the respondent has legitimate rights and interests in the disputed domain name, under Policy ¶ 4 (a) (ii), or whether the respondent registered and was using the disputed domain in bad faith, under Policy ¶ 4 (a)(iii)); see also Pet Warehouse v. Pets.com, Inc., D2000-0105 (WIPO April 13, 2000) (panel need not consider elements of legitimate interests or bad faith if complainant fails to establish enforceable rights in mark).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Calvin A. Hamilton, Panelist
Dated: December 4, 2007
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