national arbitration forum




Yvonne Abraham v. Catherine Berke

Claim Number: FA0809001226027



Complainant is Yvonne Abraham (“Complainant”), represented by David McCraw, of The New York Times Company, New York, USA.  Respondent is Catherine Berke (“Respondent”), California, USA.



The domain name at issue is <>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.



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.


Louis E. Condon as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 3, 2008.


On September 24, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 28, 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 by e-mail.


Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.


On November 3, 2008 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.


Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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.      Respondent’s <> domain name is identical to Complainant’s YVONNE ABRAHAM mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


B.  Respondent failed to submit a Response in this proceeding.



Complainant is named Yvonne Abraham, and has personally and professionally used the YVONNE ABRAHAM mark to identify herself all her life.  Complainant is a journalist employed by the Boston Globe newspaper; Complainant was previously employed by the Boston Phoenix newspaper, and has used the YVONNE ABRAHAM mark as a journalist in the Boston, Massachusetts area since 1994.  Complainant writes twice weekly for the Boston Globe newspaper, which reaches more than 560,000 subscribers.  Complainant has written more than 1,100 articles for Boston area publications, with more than 1,000 for the Boston Globe newspaper alone.  Complainant’s name and picture are featured beside the column that she writes for the Boston Globe newspaper.


Respondent registered the <> domain name on September 1, 2008.  The disputed domain name is currently “under construction,” with no other content; no other use is actively being made of 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."


In view of 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 draw such inferences it 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 that 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 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.


Identical and/or Confusingly Similar


Complainant need not demonstrate its rights in a mark via trademark registration in order to obtain UDRP standing, so long as Complainant can demonstrate its sufficient common law rights through secondary meaning under Policy ¶ 4(a)(i).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v., FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).


Complainant contends that the YVONNE ABRAHAM has acquired distinctiveness through its association with her reporting for the Boston Globe for the last nine years, and through her Boston area reporting for the last fourteen years.  Complainant also contends that her personal name, which is identical to the YVONNE ABRAHAM mark, has been used continuously in commerce for at least a decade to promote the sales of Boston area publications, including nine years of Boston Globe sales around the region.  The Panel finds that because Complainant has used the YVONNE ABRAHAM continuously in commerce for an extended period of time in a major metropolitan area, Complainant has established common law rights in the YVONNE ABRAHAM mark for purposes of Policy ¶ 4(a)(i).  See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).


Complainant contends that Respondent’s <> domain name is identical to its YVONNE ABRAHAM mark.  The <> domain name differs from Complainant’s mark only in that the space between the words has been removed, and that the generic top-level domain (“gTLD”) “.com” has been added.  The removal of a space from a mark does not render a domain name non-identical to that mark, nor does the addition of a gTLD, because every domain name must contain a top-level domain.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <> 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 Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).  Because the only change to Complainant’s mark has been the addition of a gTLD, the Panel finds that, pursuant to Policy ¶ 4(a)(i), Respondent’s disputed domain name is not sufficiently distinguished from, and is identical to, Complainant’s mark.  See Daedong-USA, Inc.  v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”); see Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").  


The Panel finds that Policy ¶ 4(a)(i) has been satisfied.


Rights or Legitimate Interests


Complainant contends that Respondent lacks all rights and legitimate interests in the <>domain name.  Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant has in fact made a prima facie case under Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).


Complainant contends that Respondent is not commonly known by the <> domain name nor has it ever been the owner or licensee of the YVONNE ABRAHAM mark.  The WHOIS record for the disputed domain name lists Respondent as “Catherine Berke.”  Respondent has failed to show any evidence contrary to Complainant’s contentions, and so, because Respondent has not been identified by any variant on the YVONNE ABRAHAM mark, the Panel finds that Respondent is not commonly known by the <> domain name pursuant to Policy ¶ 4(c)(ii).  See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<>] domain name.”).


Respondent has made no demonstrable preparations to use the <> domain name; it currently resolves to a website that is “under construction,” with no actual content provided on the website.  The failure to use a domain name for any purpose at all is evidence of a lack of rights and legitimate interests in a domain name.  See 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).  The Panel finds that Respondent’s failure to use the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (A respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that the respondent might be capable of doing otherwise); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).


The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.


Registration and Use in Bad Faith


Complainant contends that Respondent has intentionally used Complainant’s YVONNE ABRAHAM mark in the disputed domain name, and has failed to make any use of the disputed domain name.  The failure to use a domain name in any way permits an inference of registration and use in bad faith.  See Clerical Med. Inv. Group Ltd. v., D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).  Because the disputed domain name incorporates Complainant’s YVONNE ABRAHAM mark, which is also the personal name of Complainant, and because the use of Complainant’s personal name itself indicates bad faith by Respondent in the absence of evidence to the contrary, the Panel finds that Respondent’s failure to use the disputed domain name, when considered in light of the totality of the circumstances, is evidence of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).  See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (holding that the respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan); see also 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.”). 


The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.



Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.





Louis E. Condon, Panelist

Dated:  November 6, 2008



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