Yurman Studio, Inc. v. John Melnicki
Claim Number: FA0907001272698
Complainant is Yurman Studio, Inc. (“Complainant”), represented by Pamela M. Deese, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <evanyurman.com>, registered with 1 & 1 Internet Ag.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2009. The National Arbitration Forum received a hard copy of the Complaint on July 9, 2009.
On July 13, 2009, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <evanyurman.com> domain name is registered with 1 & 1 Internet Ag and that the Respondent is the current registrant of the name. 1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 July 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 3, 2009 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 by e-mail.
A timely Response was received and determined to be complete on August 3, 2009.
On August 6, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a designer of watches, necklaces, bracelets, rings, and other
jewellery which it sells through department stores such as Neiman Marcus and
Complainant submits that it sold jewellery under those trademarks for over 30 years and that annual sales of goods sold by reference to those trademarks now exceeds US$500 million. Complainant alleges that over the past five years it has devoted 12% of its earnings to marketing of its goods, which has included publicity in magazines such as Vogue, Harper’s, W, Town & Country, Elle, Architectural Digest, T, Quest, Hamptons, Ocean Drive, L.A. Confidential and Gotham.
Evan Yurman is the son of Complainant’s founder, David Yurman. It is contended that in 2005, Evan Yurman launched his own jewellery line, which has been promoted in the New York Times, Time, and Esquire. Complainant claims common law rights in the name EVAN YURMAN and has pending US Federal Trademark Application Serial No. 78799090, filed January 25, 2006, for that mark.
Complainant argues that the disputed domain name is confusingly similar to the trademarks, YURMAN, DAVID YURMAN and D. YURMAN and is identical to the EVAN YURMAN trademark.
Complainant submits that Respondent lacks any rights or legitimate interests in the disputed domain name and alleges that Respondent registered and used the disputed domain name in bad faith in light of the pre-exiting reputation in the trademarks associated with Complainant’s business.
Complainant alleges that Respondent has engaged in a pattern of bad faith conduct by registering domain names containing the names of well-known celebrities and their families, as well as domains that incorporate well-known trademarks. In particular, Complainant claims that:
Respondent has registered roughly 355 domain names, which include <jaredbelushi.com> (Jim Belushi's son), <dimitrihamlin.com> (Harry Hamlin's son), <brawleynolte.com> (Nick Nolte's son), <lairdstone.com> (Sharon Stone's son), <judithguliani.com> (wife of Rudy Giuliani), <hilarygumbel.com> (wife of Bryant Gumbel), <rickylauren.com> (wife of Ralph Lauren), <chelseaclintonmezvinsky.com> (Chelsea Clinton + boyfriend Marc Mezvinsky), <lenaredford.com> (Robert Redford + girlfriend Lena Olin). Respondent has also registered <buystarbucksmugs.com>, <starbucksmugathon.com>, <starbucksmugs.com>, <davincicodeuncorked.com>, <davincicodefactoids.com>, <dacodingdavinci.com>, <davincicodespy.com>, and <knowyouripod.com>.
Respondent states that:
Complainant has no U.S. Trademark Registration in “Evan Yurman”. Neither Respondent nor any of Respondent’s family members are in the jewelry business. There is absolutely no chance of confusing similarity…
Respondent claims to have been unaware of Complainant and of Evan Yurman at the time he registered the disputed domain name. Respondent submits that he has an eleven year old son named Evan Melnicki and that:
Beginning at a young age, Respondent and his son exchanged the phrases “my man” and “your man” as terms of affection. These were eventually shortened to the colloquial “ma man” and “yur man”. As a tribute to his son, in December 2005 Respondent registered the domain name “evanyurman”. Evan would then be able to refer friends and family to his, and his father’s, site.
Respondent claims to have acted in good faith since:
it is not possible that Respondent registered the domain name with bad intentions related to the trademark since the trademark had not been filed for or registered at the time the Respondent became owner of the domain. Further, neither Respondent, his young son, nor any other family member, colleague, employee, or associate were aware of Complainant’s existence at the time of registration.
1. Complainant’s Federal trademark registrations are valid and subsisting.
2. Complainant has not authorised Respondent to use any of the trademarks, nor to register any domain name incorporating those marks.
3. Respondent registered the disputed domain name on December 31, 2005.
4. Respondent has no relevant trademark rights, registered or not.
5. On or before June 8, 2009, the disputed domain name redirected Internet users to a website unconnected with Complainant offering employment screening services.
6. On June 9, 2009, Complainant’s external counsel sent a cease-and-desist letter to Respondent. Respondent replied that he and his son intended to use the domain name to sell skateboards, but offered to sell the disputed domain name for US$19,000.
7. By June 24, 2009, the disputed domain name redirected Internet users to a website offering for sale skateboards by “Evan Yur-Man”.
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.
Paragraph 4(a)(i) of the Policy requires
Complainant to show rights in a relevant trademark. The Policy does not distinguish between registered
and unregistered trademark rights (see McCarthy on Trademarks and Unfair
Competition, § 25:74.2 (4th ed. 2002)), however a trademark
registered with a national authority is prima
facie evidence of trademark rights for the purposes of the Policy. See State Farm Mut. Auto. Ins.
By virtue of its US Federal Trademark Registration No. 3506959 the Panel finds Complainant to have rights in the trademark YURMAN. For reasons which follow, the Panel need not make a decision on the question of whether Complainant also has common law rights in the trademark EVAN YURMAN.
Paragraph 4(a)(i) then requires a finding that the disputed domain name is at least confusingly similar to the relevant trademark. In the respect, Respondent argues that there can be no confusion because Respondent does not sell jewellery.
The consensus of panelists applying the UDRP is that website content and the nature of the parties’ businesses is immaterial to the determination of confusion under paragraph 4(a)(i) of the Policy. The relevant question is whether the trademark and domain name have confusing similarity. See Qn #1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Question, (February 2005) at http://www.wipo.int/amc/en/domains/search/overview/index.html (“The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.”).
It is widely accepted that the addition of a gTLD such as “.com” is trivial and will not of itself have any influence on the assessment of confusing similarity between trademark and domain name. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”).
When the terms EVAN YURMAN and YURMAN are thus compared, the Panel finds that they are confusingly similar.
Complainant has satisfied the first limb of the Policy.
Complainant has the burden to establish 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 onus shifts to Respondent to demonstrate rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prod., 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).
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Subparagraph 4(c)(iii) has no application to the facts of this case since Respondent’s use is commercial. The Whois record does not support any finding that Respondent is commonly known as EVAN YURMAN and/or by the domain name <evanyurman.com>. Complainant describes the father-and-son story as “a thinly-veiled attempt by Respondent to create the appearance of ‘legitimate’ use of the evanyurman.com domain name”, a characterisation with which the Panel would agree were it necessary. All the Panel need decide is that there is no proof that Respondent was commonly known by that name. In terms of subparagraph 4(c)(i), the Panel finds that, even if it could be said that the offering predated notice of the dispute, use of a third party’s trademark to attract and redirect internet users to Respondent’s website does not constitute a bona fide offering of goods or services. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003).
The Panel finds that Complainant established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel also finds that Respondent has done nothing to rebut that case and accordingly Complainant has established the second element of the Policy.
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration or use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out‑of‑pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on‑line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The long term use and highly visible promotion of Complainant’s trademarks creates a rebuttable presumption that Respondent had knowledge of Complainant business and its trademarks at the time he registered the disputed domain name. Contrary to Respondent’s assertions, launch and first promotion of the EVAN YURMAN line of jewellery predated the domain name registration, whether or not it could be said common law rights in that trademark had also accrued by that date. The Panel finds on a balance of the evidence that is more likely than not that Respondent knew of Complainant and of the emerging EVAN YURMAN line of goods at the time he registered the domain name. See, e.g., Aldana v. net tech, FA 1202934 (Nat. Arb. Forum, July 24, 2008); see also 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005).
In view of Respondent’s lack of legitimate interests in the domain name and his demand for US$19,000 to part with it, the Panel finds that Respondent registered the domain name primarily for the purpose of selling it to the Complainant in contravention of subparagraph 4(b)(i) of the Policy. See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003).
The Panel finds that Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name under subparagraph 4(b)(ii). Complainant provides information that Respondent has engaged in a pattern of such conduct. The Panel is entitled to accept 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); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000).
The Panel also finds that Respondent has, for commercial gain, intentionally attempted to attract internet users to his website by creating a likelihood of confusion with the Complainant's trademark under subparagraph 4(b)(iv) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <evanyurman.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: August 19, 2009
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