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.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <californiacountry.com>
(“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 <californiacountry.com>
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
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 email@example.com
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
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.
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
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.
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.
C. Additional Submission by
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
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
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
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
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.
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
Identical and/or Confusingly
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 <vindiesel.com> 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
<bodybyvictoria.com> 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 <avnet.net>
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 <six.net> and <sixnet.com>
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
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
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 <warmthings.com>
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
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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