Yurman Design, Inc. v. Andrew Scherer
Claim Number: FA0710001105518
Complainant is Yurman Design, Inc. (“Complainant”), represented by Lora
A. Moffatt of Salans, 620 Fifth Avenue, New York, NY,
10020. Respondent is Andrew Scherer
(“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <davidyurmandeals.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 31, 2007; the National Arbitration Forum received a hard copy of the Complaint November 1, 2007.
On October 31, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <davidyurmandeals.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 29, 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@davidyurmandeals.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <davidyurmandeals.com>, is confusingly similar to Complainant’s DAVID YURMAN mark.
2. Respondent has no rights to or legitimate interests in the <davidyurmandeals.com> domain name.
3. Respondent registered and used the <davidyurmandeals.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yurman Design, Inc.,
has sold jewelry under the DAVID YURMAN mark since 1970. Complainant also designs, manufactures, and
distributes jewelry, and under the direction of jewelry designer, Mr. David
Yurman, has become one of
Respondent registered the <davidyurmandeals.com> domain name July 11, 2007. Respondent previously used the website to direct Internet users to a website that sold replica jewelry. Since October 24, 2007, the disputed domain name has not resolved to an active website. Additionally, Respondent offered to sell the disputed domain name.
Paragraph 15(a) of 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."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 registered the DAVID YURMAN mark with the USPTO, and has therefore established rights to the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The disputed domain name that Respondent registered, <davidyurmandeals.com>, is
confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). The Panel finds that the addition of the
generic term “deals” to Complainant’s mark does not sufficiently distinguish
the disputed domain name from the DAVID YURMAN mark. Further, because all domain names are
required to have a top-level domain, Respondent’s inclusion of the generic
top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name
from Complainant’s DAVID YURMAN mark.
The Panel finds that the disputed domain name is confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003)
(“The addition of a top-level domain is irrelevant when establishing whether or
not a mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”); see
also Arthur Guinness Son & Co. (
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights or legitimate interests in the <davidyurmandeals.com> domain name. Complainant must first present a prima facie case establishing that Respondent lacks all rights and legitimate interests in the disputed domain name. Once Complainant has met the burden and made a prima facie case supporting the assertion that Respondent lacks rights and legitimate interests, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant demonstrated that Respondent lacks rights and legitimate interests, and thus made a prima facie case pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Panel is entitled to presume that Respondent lacks all rights and legitimate interests in the disputed domain name where Respondent fails to answer the Complaint. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, the Panel will examine all evidence in the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent has never been authorized to use the DAVID YURMAN mark, and that Respondent is not and has never been commonly known by the
<davidyurmandeals.com> domain name. Furthermore, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent previously used the disputed domain name to
direct Internet users to the <overstockjewelery.com> website where
replica products competing with Complainant’s products could be ordered. The Panel concludes that such use is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Diners Club Int’l Ltd. v. Car in Won
Currently, Respondent is not actively using the disputed domain name. Complainant sent a letter to Respondent October 24, 2007, demanding that the domain name be transferred to Complainant. Following this letter, the link to <overstockjewelery.com> was removed and the website does not currently resolve to an active website. The Panel finds that this non-active use of the disputed domain name also is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
Moreover, Respondent’s attempt to sell the disputed domain name to Complainant for an undisclosed amount evidences that Respondent lacks rights and legitimate interests in the <davidyurmandeals.com> domain name pursuant to Policy ¶ 4(c). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent previously used the disputed domain name to direct Internet users to a competing website and benefited from the likely confusion between Complainant’s mark and the disputed domain. The disputed domain name is capable of creating confusion as to Complainant’s source, sponsorship, affiliations, or endorsement of the competing products advertised on the website that resolved from the disputed domain name. The Panel finds that this constitutes evidence of Respondent’s bad faith registration and use of the <davidyurmandeals.com> domain name under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
In addition, the Panel finds that use of the disputed domain name that contains Complainant’s protected mark in its entirety to advertise links to competing products constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Respondent registered the <davidyurmandeals.com> domain name but is not actively using the disputed domain name. The Panel finds that non-use supports findings of bad faith registration and use under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Finally, Respondent’s offer to sell the disputed domain name also supports findings of registration and use in bad faith under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <davidyurmandeals.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 21, 2007.
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