Yurman Studio, Inc. v.
Claim Number: FA0808001218795
PARTIES
Complainant is Yurman Studio, Inc. (“Complainant”), represented by Henry
W. Huffnagle, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dyurman.com>, registered with Compana, LLC.
PANEL
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.
David P. Miranda, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 1, 2008; the
National Arbitration Forum received a hard copy of the Complaint on August 4, 2008.
On August 5, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <dyurman.com> domain name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 11, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 2, 2008 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@dyurman.com by e-mail.
A timely Response was received and determined to be complete on September 2, 2008.
On September 9, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Yurman Studio, Inc. (“Complainant”) seeks transfer of the
disputed domain name <dyurman.com> from Respondent Texas International Property Associates
– NA NA (“Respondent”). Complainant owns
a federal trademark registration, U.S. Reg. No. 1,553,674, registered
August 29, 1989 for the mark D.YURMAN for jewelry in class 14, and has a
related pending application for the identical mark for products including
woman’s and men’s fragrances, sunglasses, eye glasses, U.S. Application No.
77/008,881. Complainant contends that it
has established common law rights in the mark since at least as early as 1977,
and is a leading high end jewelry designer with boutiques located in the
Complainant further contends that Respondent registered the disputed domain name <dyurman.com> on December 27, 2005 many years after Complainant’s mark became famous. Complainant further contends that the disputed domain name offers a commercial search engine, a service that links to competitors of Complainant, offering jewelry and other related products, including a link to products called, “Yurman knock-offs.” Complainant further contends that Respondent does not use the disputed domain name for any legitimate business purpose.
Complainant contends that the mark
at issue is identical or confusingly similar to Complainant’s
Complainant contends that Respondent is not
now, nor was it ever making a legitimate non-commercial, fair use, or bona fide offering of goods or services
in connection with the disputed domain name.
Complainant further contends that Complainant’s D.YURMAN jewelry was
well known and widely advertised in the
B. Respondent
Respondent does not dispute any of Complainant’s
contentions, and offers “consent to transfer” requested by Complainant. Respondent further contends the transfer should be
provided without consideration of the UDRP elements in light of the Policy in
favor of “expedition” of UDRP decisions.
Respondent
offers no explanation for its delay in failing to transfer the domain as
requested by Complainant’s counsel, as early as April 9, 2008.
FINDINGS
Complainant has established all three elements of the UDRP policy and Respondent does not contest any of the proof submitted, but rather consents to the transfer of the domain name to Complainant. Thus, the Panel finds that Complainant has established all elements of the Policy, and directs the transfer of the domain name to Complainant.
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.
Where Respondent has
consented to the transfer of the disputed domain name, the Panel may forego the
traditional UDRP analysis and order the immediate transfer of the domain
name. See Royal Bank of Scotland Group PLC
v. Richards, FA 1179260 (Nat. Arb. Forum June 2, 2008). In such situations where consent to transfer
is provided by Respondent, the Panel may direct transfer without
a finding on the merits, however, the Panel may also direct transfer of the disputed
domain name, along with findings in accordance with the Policy. See Graebel Vanlines, Inc. v.
Complainant asserts rights in the D.YURMAN mark (Reg.
No. 1,553,674 issued August 29, 1989 by the United States Patent and Trademark
Office (“USPTO”)). The Panel finds that
Complainant has sufficient rights in the mark under Policy ¶ 4(a)(i). See
Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12,
2006); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum
May 23, 2005). Respondent does not
object to this assertion of rights.
Respondent’s <dyurman.com> domain name includes Complainant’s D.YURMAN mark while
omitting the period and adding the generic top-level domain “.com.” The disputed domain name is identical to the
mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding
that the mere addition of the generic top-level domain “.com” is insufficient
to differentiate a disputed domain name from a mark); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May
18, 2000) (holding “that the use or absence of punctuation marks, such as
hyphens, does not alter the fact that a name is identical to a mark”).
Complainant must
first make a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it
does have rights or legitimate interests.
See Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006).
Complainant contends that Respondent is not authorized or licensed to use its D.YURMAN mark, and that the WHOIS information lists Respondent as “Texas International Property Associates – NA NA.” Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The disputed domain name resolves to a
website that features a commercial search engine function with advertisements
for third-parties that directly compete with Complainant. Respondent does not contest this or that disputed
domain name is not being used in conjunction with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007).
Complainant argues that Respondent
has been the respondent in numerous other UDRP cases wherein the disputed
domain names were transferred from Respondent to the respective complainants in
those cases. See, e.g., Fry’s Elec. Inc. v.
Respondent has disrupted
Complainant’s business by creating a website resolving to the disputed domain
name that features advertisements for Complainant’s direct competitors and
knock-offs of Complainant’s own
products. Respondent has engaged in bad
faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v.
Aston, FA 593977 (Nat. Arb. Forum
Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert
Complainant’s customers to Respondent’s competing business. This diversion is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii).”);
see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July
18, 2000) (finding that the respondent registered the domain name in question
to disrupt the business of the complainant, a competitor of the respondent).
Moreover,
Complainant asserts that Respondent has intentionally created a likelihood of
confusion for commercial gain as to Complainant’s source or endorsement of the
allegedly confusingly similar disputed domain name and corresponding website. Respondent has engaged in a pattern of
bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb.
Forum Mar. 21, 2006) (“Respondent is
using the disputed domain name to operate a website which features links to
competing and non-competing commercial websites from which Respondent
presumably receives referral fees. Such
use for Respondent’s own commercial gain is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv).”).
Finally, Complainant asserts that Respondent had either actual or
constructive notice of Complainant and Complainant’s rights in the mark given
Complainant’s long-standing trademark registration, as well as the content of
the resolving website. The Panel finds
that Respondent’s
multiple uses of Complainant’s federally
registered name and marks on its website constitutes bad faith registration and
use under Policy ¶ 4(a)(iii). See
Entrepreneur Media, Inc. v. Smith, 279
F.3d 1135, 1148 (9th Cir. 2002)
("Where an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse."); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
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 <dyurman.com> domain name be TRANSFERRED
from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: September 23, 2008
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