National Arbitration Forum

 

DECISION

 

Muginoho USA, Inc. v. Eric Rafia, Yassi Rafia and Allen Choi

Claim Number: FA0711001109054

 

PARTIES

Complainant is Muginoho USA, Inc. (“Complainant”), represented by Thomas M. Pitegoff of Pitegoff Law Office PLLC, 10 Bank Street, Suite 540, White Plains, NY, 10606.  Respondent is Eric Rafia, Yassi Rafia and Allen Choi (“Respondent”), PO Box 35510, Monte Sereno, CA, 95030.

 

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <beardpapa.net> and <beardpapas.net>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically November 14, 2007; the National Arbitration Forum received a hard copy of the Complaint November 14, 2007.

 

On November 14, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <beardpapa.net> and <beardpapas.net> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name.  Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, 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 December 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 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@beardpapa.net and postmaster@beardpapas.net by e-mail.

 

A timely Response was received and determined to be complete December 26, 2007.

 

The Arbitrator received no additional submissions.

 

On December 29, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant makes the following allegations in this dispute:

1.      The disputed domain names are identical to Complainant’s protected mark.

2.      Respondent has no rights to or legitimate interest in the domain name that is identical to Complainant protected mark.

3.      Respondent acted in bad faith in registering and using a mark containing in its entirety Complainant’s protected mark.

4.      The Respondent is known to Complainant from at least one prior action protecting Complainant’s mark and Respondent asserts that the named Respondent are the same person and or entity acting in concert.

 

B.     Respondent raised the following points in response:

1.      Complainant has mis-identified the Respondent.

2.      Respondent does not own the domain names in issue.

3.      Respondent did not address the issue of confusing similarity or identicality of the domain names to Complainant’s protected mark.

4.      Respondent stated that it had no rights to or interest in the disputed domain names at the time this matter was initiated.

5.      Respondent did not address the issue of bad faith registration and use.

 

FINDINGS

Complainant established rights in the BEARD PAPA mark by virtue of trademark registrations with several governmental authorities, including the Japan Patent Office (Reg. No. 4529531 issued December 14, 2001), the United States Patent and Trademark Office (Reg. No. 2,933,851 issued March 15, 2005) and the Canadian Intellectual Property Office (Reg. No. TMA698,332 issued October 12, 2007). 

 

Respondent failed to make any showing relative to the required prongs that must be met in this dispute.

 

The named Respondents are either one individual or entity or acts through aliases; or Respondent is a joint enterprise that may be considered one and the same.

 

DISCUSSION

 

Preliminary Issue: Multiple Respondents

 

In the instant proceedings, Complainant has alleged that the entities controlling the domain names at issue are effectively controlled by the same person and/or entity operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” 

 

The Panel first considers whether these proceedings have been properly instituted.  UDRP ¶ 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant contends that Respondent is operating under various asserted alleged aliases. 

 

Complainant asserts that the listed registrants for the <beardpapa.net> and <beardpapas.net> domain names are owned by the same person, notwithstanding the appearance that the <beardpapa.net> and <beardpapas.net> domain names are technically registered by two separate individuals according to the verification by the registrar.  A third individual stated that he has never owned either of the disputed domain names. 

 

Complainant contends that Respondent Eric Rafia previously owned the disputed domain names, but that upon communication from Complainant regarding the disputed domain names, Rafia transferred the <beardpapa.net> and <beardpapas.net> domain names to other individuals acting on his behalf, or that these other names are simply aliases of Eric Rafia.  

 

The Panel finds that based on Complainant’s submission and documents in support such as the WHOIS listings and the cease and desist information, the Respondents are the same person or entity, or are parties or entities controlled by the same person or entity, so that the filing of this Complainant is justified, proper and pursuant to Supplemental Rule ¶ 4(f)(ii).  See Dr. Ing. H.c. F. Porsche AG v. Kentech, Inc., D2005-0890 (WIPO Oct. 24, 2005) (finding one respondent where different aliases had completely different WHOIS contact info, because the panel found the WHOIS information to have been “switched into different names” as a part of “a campaign to hinder the Complainant.”).

 

            Primary Issue

 

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 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

 

Identical to and/or Confusingly Similar

 

Complainant asserts rights in the BEARD PAPA mark by virtue of trademark registrations with several governmental authorities, including the Japan Patent Office (Reg. No. 4529531 issued December 14, 2001), the United States Patent and Trademark Office (Reg. No. 2,933,851 issued March 15, 2005) and the Canadian Intellectual Property Office (Reg. No. TMA698,332 issued October 12, 2007).  The Panel finds that these trademark registrations adequately convey rights to Complainant in the BEARD PAPA mark for the purposes of Policy ¶ 4(a)(i).  See 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.”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for the purposes of Policy ¶ 4(a)(i).”).

 

The <beardpapa.net> domain name is identical to Complainant’s BEARD PAPA mark under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s entire mark with the elimination of the space between the two words of the mark, and the addition of the generic top-level domain (“gTLD”) “.net.”  Previous panels have found, and this Panel finds, that due to the nature of domain names, such modifications are irrelevant in a Policy ¶ 4(a)(i) analysis and accordingly the disputed domain name identical to Complainant’s mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark).    

 

Additionally, the Panel finds that the <beardpapas.net> domain name is confusingly similar to Complainant’s BEARD PAPA mark as the disputed domain name contains Complainant’s entire mark with the addition of the letter “s” to the end of the mark, as well as the gTLD “.net.”  Neither of these modifications sufficiently distinguishes the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i).  See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the <barnesandnobles.info> and <barnesandnobles.biz> domain names are confusingly similar to the complainant’s BARNESANDNOBLE.COM mark because the additions of the letter “s” and generic top-level domains to the dominant features of the complainant’s mark do not negate the confusingly similar aspects of the domain names pursuant to Policy ¶ 4(a)(i)); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark).      

 

The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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).

 

Complainant asserts that Respondent is not commonly known by either of the <beardpapa.net> and <beardpapas.net> domain names, and that no indication in the WHOIS record suggests that Respondent is known by the domain names or the mark. Complainant alleges that Respondent is not authorized to use Complainant’s mark in any way and the Panel found no evidence in the record to suggest that Respondent has proof to show any right to use Complainant’s mark in a domain name or otherwise.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names as required to satisfy Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).   

 

Complainant also contends that the websites that previously resolved from the <beardpapa.net> and <beardpapas.net> domain names displayed advertisements for third-party websites seeking to compete directly with Complainant.  No current use is alleged by Complainant; however, Respondent’s previous use of the disputed domain names indicates that they were not used in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) and that they were not used in connection with a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute 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 also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).    

 

Complainant also maintains that one of the entities named collectively as Respondent in this case (Eric Rafia) has attempted to sell the disputed domain names to Complainant for $2,000.  The Panel finds that such an offer supports the inference that Respondent lacks rights and legitimate interests in the <beardpapa.net> and <beardpapas.net> domain names under Policy ¶ 4(a)(ii).  See 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); see also 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.”).      

 

            The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

An offer to sell the <beardpapa.net> and <beardpapas.net> domain names to Complainant for an amount in excess of expected out-of-pocket costs, as asserted by Complainant, supports findings of bad faith registration and use under Policy ¶ 4(b)(i).  See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).   

 

Complainant contends that the websites that resolve from the disputed domain names previously contained advertisements for third-parties in direct competition with Complainant’s business.  The Panel find that such prior use constitutes a disruption of Complainant’s business, and therefore supports findings of bad faith registration and use under Policy ¶ 4(b)(iii).  See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

The Panel also finds that Respondent’s previous use of the <beardpapa.net> and <beardpapas.net> domain names to display third-party competitors of Complainant, presumably for Respondent’s own commercial gain through the accrual of click-through fees by Internet users who are confused as to Complainant’s source, sponsorship, affiliation or endorsement of the disputed domain names and resulting websites, indicates bad faith registration and use under Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).     

 

            The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <beardpapa.net> and <beardpapas.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Carolyn Marks Johnson, Panelist
Dated: January 14, 2008.

 

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