National Arbitration Forum




California Farm Bureau Federation v. Steven A. Sokol

Claim Number: FA0811001235897



Complainant is California Farm Bureau Federation (“Complainant”), represented by Carl G. Borden, California, USA.  Respondent is Steven A. Sokol (“Respondent”), representing himself.



The domain name at issue is <> (“the disputed domain name”) and it is registered with Domaindiscover.



The undersigned, David H Tatham, certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as a Panelist in this proceeding.



Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 25, 2008; the Forum received a hard copy of the Complaint on December 2, 2008.


On November 26, 2008, Domaindiscover confirmed by e-mail to the Forum that the domain name <> was registered with it and that the Respondent was the current registrant of the name.  Domaindiscover has also verified that Respondent is bound by its 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 December 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of December 26, 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.


A timely Response was received and determined to be complete on December 26, 2008.


On January 2, 2008 Complainant’s Additional Submission was received by the Forum and was deemed to comply with Supplemental Rule 7.


On January 5, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.


On January 8, 2009 an Order under Rule 12 of the Policy was issued requesting Respondent to produce further examples showing use of the name ‘California Country’, all of them dated later than 1987, as promised in subparagraph 3(d) of the Response and paragraph 4 of the Declaration of Francis R Gibbons Jr. In response, Respondent filed 4 Declarations on January 22, 2009.



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



A. Complainant

Complainant has two registrations of the trademark CALIFORNIAN COUNTRY with the USPTO – No. 1,140,749, dated October 21, 1980 which is registered for “Consumer Oriented Membership Publication – Namely, a Newspaper Dealing with Activities Relating to Agriculture, Farm Products, Farm Recreating and Legislation Relating to Farms and Agriculture” and No. 2,082,288, dated July 22, 1997 which is registered for “television and radio programs on the subject of agriculture, rural living, food, and recreation.


Complainant contends that the disputed domain name is identical to these trademark registrations, both of which are currently in use and both of which were registered before the disputed domain name was registered in 1998.


Complainant further contends that Respondent has no rights or legitimate interest in the disputed domain name because he –

·        has not used or made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services;

·        has not been commonly known by the disputed domain name; and

·        is not making a legitimate non-commercial or fair use of the disputed domain name.


Complainant also contends that the disputed domain name should be considered as having been registered in bad faith because –

·        The lack of any legitimate use indicates that Respondent registered the name primarily for the purpose of selling it;

·        The name was registered in order to prevent Complainant from reflecting its trademark CALIFORNIA COUNTRY in a corresponding domain name;

·        The status of the website at the disputed domain name is “parked” which means that it neither has been nor is associated with any website; and

·        One of Complainant’s employees, a Rene Hyatt, engaged in a conversation with Respondent in July 2005 during which the latter advised her that his client might be prepared to sell the disputed domain name if the price justified it and he suggested that this price should be in excess of $10,000. A Declaration from the said Rene Hyatt was annexed to the Complaint.


B. Respondent

Respondent, Steven A. Sokol, states that he is a practicing attorney and that he registered and has maintained ownership of the disputed domain name on behalf of a Mr. Francis R. Gibbons, Jr. He further contends that Mr. Gibbons has been a recognized interior designer since 1976 who, in 1984, gave the name “California Country” to his own particular style of decorating. This was long before domain names were generally available or used in the business community, and Respondent contends that Mr. Gibbons has used that name in the marketing of his decorating services since 1984, but never in connection with farm products, farm-related lobbying efforts, or any other farm-related products or services. A Declaration by Mr. Gibbons was annexed to the Response in which he confirms that he has been an interior designer since 1976, that he gave the name ‘California Country’ to his own signature style of design in 1984 and that he has used it exclusively since then, that he asked his attorney Mr. Sokol to register the disputed domain name for him in about 1998, that it has been renewed ever since, that when Mr. Sokol told him in July 2005 that someone from Complainant had offered to buy the disputed domain name he said that he was not interested in selling, that the name was part of his daily life, and that he did not want to give it up.


Also filed were copies of a number of newspaper and magazine articles published from 1984 onwards which include Mr. Gibbons’ name and the name and mark ‘California Country.’ Respondent states that these copies are only a portion of the total number of articles that have been published mentioning Mr. Gibbons and his ‘California Country’ style of interior decoration, and that they were compiled in the short period from the service of the Complaint to the submittal of a Response.


Respondent maintains that neither he nor Mr. Gibbons has ever used or threatened to use either the name ‘California Country’ or the disputed domain name in connection with any product or service that would fall within the lists of goods and services of Complainant’s two trademark registrations.


Respondent contends that the use of the name ‘California Country’ in connection with interior design is not confusingly similar to the use Complainant has made of that name and that the Complaint does not even assert any facts that would tend to show any confusingly similar use or likelihood of confusion.


Respondent disputes that he ever sought to sell the disputed domain name to Complainant or to anyone else, and states that in fact the reverse is true. He points out that the Declaration of Renee Hyatt does not even assert that Respondent ever contacted Complainant for purposes of selling the disputed domain name or any other purpose.  Rather, Complainant attempted to purchase the name from Respondent.


Respondent states that in 2006 a commercial artist was engaged to render ideas for logos incorporating the name ‘California Country’ and the disputed domain name, in preparation for using such logos in additional marketing of Respondent’s interior design products and services. This preparation preceded the filing and service of the Complaint by more than two years.  Several examples of such renderings were attached to Mr. Gibbons’ Declaration.


C. Additional Submission by Complainant

As stated above, Complainant filed an Additional Submission.


In it, Complainant notes that although Respondent claims to hold the disputed domain name on behalf of Mr. Frances R Gibbons, and contends that the latter has been using the name ‘California Country’ since 1984, in fact no evidence of such use was filed that is dated later than 1987. Indeed, a search on the “Google”® search engine for ‘California Country’ revealed no mention of Respondent or Mr. Gibbons, and in fact the top priority results were for Complainant’s TV programme and its magazine. There is however reference to a Diane Dorrans Sacks, as the author of “California Country Style” published in 2006. Also mentioned was a business called California Country Furniture based in Imperial, California. Nothing was said in the Response about any connection between Respondent and this business.


Furthermore, one of the documents filed by Respondent was an undated promotional flyer for Mr. Gibbons’ business which gives a telephone number which is out-of-service, and an address in Los Angeles California which, according to evidence supplied by Complainant, belongs to a store called Futon City.


Complainant points out that, despite Respondent’s assertion that there has been no proof of confusing similarity between the disputed domain name and Complainant’s trademark, the Policy does not call for any.


Finally, Complainant notes that although some logo ideas were commissioned from a commercial artist, these are nothing more than haphazardly assembled ‘streams of consciousness’ lists and things utterly unconnected with interior design. Furthermore, despite the fact that these renderings were allegedly made in 2006 Respondent has still not used the disputed domain name for any website. 


D. Additional Submission by Respondent

As stated above, an Additional Submission was filed by Respondent, in response to an Order by the Panel. It consisted of four Declarations; three of which were from clients of Mr. Gibbons, and one was from himself.


In the first of these, Cathrine Ireland states that she has known Francis R Gibbons for about 18 years, that he has provided interior decorating services for her on 6 different properties, that he has also consulted on other projects for herself and her family, that she has recommended him to her friends and acquaintances under the name ‘California Country,’ most recently in mid-2008, and that she has read articles in publications about Mr. Gibbons or his ‘California Country’ decorating services.


In the second, Patricia Dorsey and Gregory Redliz state that they have known Mr. Gibbons since approximately 1987 when he operated a furniture and decorating store known as “The California Country Furniture Store”, that he has provided interior design and decorating services for them for over 20 years including the design of several pieces of furniture in a ‘California Country’ style (photographs of which were attached to the Declaration), that Mr. Gibbons supervised the renovation and expansion of their residence “in a California country style in 1999-2000” and continued to provide his services over several subsequent years, that he has always referred to his style of design and decoration as ‘California Country,’ and that they have always known his business under that name.


In the third, Michael Sigman states that he has known Mr. Gibbons as his decorator since approximately 1984, that he has provided interior decorating services for him “on at least 50 occasions” the most recent being in 2007, that he has also decorated for parties and designed many original pieces for him, that he calls his style and business ‘California Country,’ that he has known him under that name since he first started using his services, and that he has seen a number of magazine articles that contained interviews with Mr. Gibbons or “stories about his decorating services using the name California Country.


Finally, there was filed a further Declaration from Mr. Gibbons in which he states that he has “done projects under the name California Country for many high-end clients including well known entertainment and political figures,” that he has used the name ‘California Country’ for his decorating style and business “for more than 20 years,” that he believes the Complainant’s attempt to take away his brand and business is an insult and unfair, and that, after 1986, he did not permit any house that he had designed or worked on to be photographed for any publication or television in order to protect his designs from being reproduced and to protect the privacy of his clients.




Complainant has provided no information about itself, but it can be assumed from its name and trademark registrations that it is a membership organisation which is concerned with farming and agriculture and that it hosts television and radio programmes on those subjects. It has two trademark registrations for CALIFORNIA COUNTRY claiming first use since 1979 and 1996 respectively.


Respondent is a lawyer who registered and maintains the disputed domain name on behalf of one of his clients, Mr. Francis R Gibbons Jr., who is an interior designer and active as such since 1976. The latter coined the name ‘California Country’ to describe his particular style of decorating in 1984.  



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.


Preliminary Issue

The registered owner of the disputed domain name is Mr. Stephen A Sokol who is an attorney, and he is – quite correctly – named as the Respondent in this matter. However he claims to have only registered the name on behalf of one of his clients, Mr. Francis R Gibbons Jr. This is confirmed by Mr. Gibbons in an unsworn Declaration and it is he who has made use of the name ‘California Country’ in his interior design business.


Both parties to this dispute appear to have accepted that, for the purpose of the Complaint, Messrs. Sokol and Gibbons should jointly be referred to as ‘Respondent’ and, where appropriate in this Decision, the Panel has adopted the same nomenclature.


Identical and/or Confusingly Similar


Complainant has established, to the satisfaction of the Panel, that it has valid rights in the name CALIFORNIA COUNTRY by virtue of its two trademark registrations. One of these claims January 31, 1979 as its date of first use, and the other the date of June 1996. They are therefore now incontestable.


When making a comparison between a trademark and a domain name under paragraph 4(a)(i) of the Policy it is standard practice to ignore any gTLD such as ‘.com’ . Also, although there is a space between the two words in the trademarks and none in the disputed domain name, spaces are not permitted in domain names. See Diesel v. LMN, FA 804924 (NAF November 7, 2006) in which it was found that the domain name <> was identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL. Also, in Victoria's Secret v. Hardin, FA 96694 (NAF March 31, 2001) it was found that the <> domain name was identical to the complainant’s BODY BY VICTORIA mark. 


Respondent has not disputed Complainant’s claim that the trademarks and the disputed domain name are identical, and the Panel has no difficulty in finding that they are. So, Policy paragraph 4(a)(i) is proved.


Rights or Legitimate Interests


Under the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the domain name.  Nevertheless, it is well settled that Complainant need only make out a prima facie case, after which the burden shifts to Respondent to demonstrate his rights or legitimate interests.  See AOL LLC v. Gerberg; FA 780200 (NAF September 25, 2006) and Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 23, 2000).


On a preliminary matter, it is emphasised in the Response and in Respondent’s evidence that nothing Mr. Gibbons has done conflicts in any way with Complainant’s farming activities. However this is irrelevant in a dispute under the Policy, which only requires a Complainant to prove that he has a trademark or service mark in which he has rights. The goods or services for which that trademark may be registered or used do not come into the matter.


Complainant contends that Respondent is not commonly known as ‘California Country’ but, in the Dorsey/Reditz Declaration, they state that in approximately 1987 they were aware that Respondent operated a store under the name “The California Country Furniture Store.” Also three of the eight magazine articles filed as part of the Response refer to this same name. The Panel therefore finds that Respondent was, at some stage, commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy, even though this use may have subsequently ceased. However his use of the name to describe his decorating style has been maintained.


In Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO March 24, 2000) it was found that the respondent was commonly known by the <> domain name because it had submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”; and in Digitronics Inventioneering Corporation v. @Six.Net Registered, D2000-0008 (WIPO March 1, 2000) it was found that the respondent was commonly known by the <> and <> domain names, even though the complainant had registered the SIXNET trademark, because the respondent demonstrated that its customers associated the respondent’s company with the domain names.


Complainant also contends that Respondent has not used or made any preparations to use the disputed the domain name, but Respondent disagrees. In his first declaration, Mr. Gibbons states that he has been an interior designer since 1976 and that he first coined the name ‘California Country,’ for his own style of design in 1984. Copies of miscellaneous articles referring to Mr. Gibbons, to ‘California Country’ or to both were filed with the Response, variously dated in 1986 or 1987. Complainant challenged the fact that that no use of the name since that time had been produced but, in response to an Order by the panel, Respondent filed Declarations from 3 of Mr. Gibbons’ clients all of which referred to the fact that he had consistently used the name ‘California Country’. 


            Complainant further contends – and Respondent does not dispute – that Respondent has not  developed an active website resolving from the disputed domain name, which could lead to a finding of no rights or legitimate iunterest. See, for example, Hewlett-Packard Co. & Hewlett-Packard Dev. Co., L.P v. Shemesh, FA 434145 (NAF April 20, 2005) and George Weston Bakeries Inc. v. McBroom, FA 933276 (NAF April 25, 2007) in both of which it was found that a respondent’s failure to make an active use of a domain name that was identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy.


However, in the light of the evidence, the Panel does not believe that Respondent has no rights to the disputed domain name. In particular, the Declarations from three of Mr. Gibbon’s clients, which the Panel accepts at their face value, make clear that Mr. Gibbons has consistently referred to his style of decorating as ‘California Country’ ever since 1984. Respondent has also submitted copies of several magazine extracts in which Mr. Gibbons’ design style is described as “California Country.” Admittedly none is dated after 1987, but Mr. Gibbons has confirmed that his career was on hold for two years as the result of serious injuries occasioned by a fall. He also claims, in his second Declaration that, since 1986, he has refused to allow his work to be photographed in order to protect the exclusivity of his designs and his clients’ privacy. The Panel views this statement with some scepticism in the light of the claim in his first Declaration that he would be able to find many more cuttings if he had had more time.   


However there were also filed copies of seven ideas for ‘California Country’ logos all of which included a reference to the disputed domain name. It is claimed that these were commissioned from a commercial artist in 2006, but they are not dated so it cannot be confirmed when they were produced. Complainant has scorned these ideas as being haphazard, but the Panel is prepared to accept them as evidence that at some stage Mr. Gibbons did have the intention of utilizing the disputed domain name in connection with his interior design business.


The Panel therefore concludes that Respondent has produced sufficient evidence to support a finding that he has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. For example, in SFX Entertainment, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) it was found that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; and in David J. Joseph Co. v. Barry, D2000-1418 (WIPO January 2, 2001) it was found that the respondent had provided substantial evidence of his demonstrable preparations to use the domain name with a business involving the sale of scrap materials prior to receiving notice of the dispute.


It is clear to the Panel that both parties to this dispute have concurrent rights in the CALIFORNIA COUNTRY mark.  Both of them make use of it but in entirely unconnected fields. In Warm Things, Inc.  v. Weiss, D2002-0085 (WIPO April 18, 2002) it was found that the respondent was making a bona fide offering of goods or services at the <> domain name and was operating in a field unrelated to the complainant or its products); also, in Graman USA Inc. v. Shenzhen Graman Industries Co., FA 133676 (NAF January 16, 2003) it was found that the respondent could maintain rights in a similar mark as the complainant because the complainant and the respondent were not in the same field of business, and therefore not competitors.


Consequently the Panel concludes that Respondent has rights and legitimate interests in the disputed domain name and that paragraph 4(a)(ii) of the Policy has not been proved by Complainant.


Registration and Use in Bad Faith


In the light of the above finding, there is no need for the Panel to consider the question of bad faith. However, it is worth noting that the Panel sees no justification in Complainant’s claim that Respondent attempted to sell the disputed domain name. It is clear from the Declaration from one of Complainant’s employees that it was in fact she who made the original approach.



Since all three elements required under the ICANN Policy have not been proved, the Panel concludes that relief shall be DENIED.






David H Tatham, Panelist
Dated: February, 2009







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