Farhad Parsie v. Tom Reese
Claim Number: FA0909001283393
Complainant is Farhad Parsie (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vievieluxe.com>, registered with Godaddy.com, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 9, 2009.
On September 9, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <vievieluxe.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 September 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 7, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 7, 2009.
On October 13, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Professor Darryl C. Wilson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant asserts that Respondents’ domain name is identical and confusingly similar to its registered trademark and as such “has the high potential of confusing the public as they are somehow related to us.” The Complainant further contends that the Respondents’ business name and domain name are infringing their trademark and violating Complainant’s legal rights. Complainant indicates that Respondents were notified that they were not authorized to use Complainant’s trademark and implies that Respondent otherwise has no rights or legitimate interests in respect of the disputed domain name.
Respondent states that its business does not share a single word in common with the Complainant. Respondent asserts in response to the request that it show a bona fide offering of goods and services that the domain name is used to identify a reputable store and that Respondent’s customers know the store website based on business cards and advertising providing the website address. Although Respondent currently advertises online they engage in no online transactions. Respondent states that although they plan to do so in the future, Respondent “has no intention of diverting consumers from the entirely different store or different website” of the Complainant.
This dispute involves two pro se parties whose pleadings contain vastly more verbatim reproductions of the ICANN Policies than direct responses to them. Although the parties failed to comply with certain technical rules all correspondence sent by the parties was evaluated in reaching a decision in this matter. As a preliminary matter Respondent’s response was submitted only in electronic format prior to the response deadline rendering it deficient pursuant to ICANN Rule 5. While the Panel realizes that such an action allows the Respondent to be placed in de facto default the Panel is inclined to overlook this particular technicality in the interest of resolving the underlying substantive dispute. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
is in the women’s clothing business and holds the registered
operates a boutique selling women’s clothes in
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.
The Panel finds that Complainant
has established rights in the VIEVIE mark pursuant to Policy ¶ 4(a)(i) through
Complainant’s registration of the mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 3,226,506 issued April 10, 2007). See
Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006)
(finding that the complainant had established rights in the BLOOMBERG mark
through registration with the United States Patent and Trademark Office); see also Microsoft
Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17,
2006) (“Complainant has established rights in the MICROSOFT mark through
registration of the mark with the USPTO.”). Respondent’s disputed domain name contains
Complainant’s mark in its entirety, adds the generic term “luxe,” and adds the
generic top-level domain (“gTLD”) “.com.”
Panel finds that the addition of the generic term “luxe” fails to create a
distinguishing characteristic within the disputed domain name. See Warner Bros. Entm’t Inc. v. Rana, FA 304696
(Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term
“collection” to Complainant’s HARRY POTTER mark failed to distinguish the
domain name from the mark); see also
Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding
that the respondent’s domain names were confusingly similar to Complainant’s
GOOGLE mark where the respondent merely added common terms such as “buy” or
“gear” to the end). In addition, the Panel finds that the addition of a gTLD is
irrelevant in distinguishing a disputed domain from a registered mark. See Jerry Damson, Inc. v.
Respondent’s focus on its current customer’s alleged knowledge of the relationship between its store and the website the disputed domain resolves to is misplaced. The potential confusion of Respondent’s present customers is not at issue in this matter. Instead the policy is concerned with protecting average consumers in the marketplace who may be confused, misled or deceived by Respondent’s domain name due to their lack of any relationship with Respondent especially if they were looking for Complainant’s goods.
The Complainant has proven this element.
The Panel recognizes that 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) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainants’ burden of proof is light in these matters since Respondent is in the best position to provide proof positive of rights or interests as opposed to requiring Complainant to prove a negative. While Complainant did not expressly state that Respondent lacked rights or legitimate interests Complainant did imply the same by providing evidence that Respondents were notified of Claimant’s rights and Claimant’s refusal to authorize Respondents’ to use its mark. The Panel finds that Complainant has made the requisite prima facie case in this instance and that the burden has shifted to Respondent.
Respondent fails to expressly address this element as well but it can be concluded from Respondent’s answer that Respondent is not currently, nor has Respondent in the past been, commonly known by the disputed domain name, or by Complainant’s mark. Respondents’ WHOIS information identifies Respondent as “Tom Reese.” Additional correspondence sent in by the Respondent indicates that Tom Reese registered the disputed domain name but that the owners of the boutique are Karen Reese and Irene Oliver. In fact all responses from Respondent received were generated by one or both of the latter two parties and nothing was received from Tom Reese. The Respondent indicates that the <vievieluxe.com> domain name is used to identify their store for their customers and that they have no intention of diverting customers away from the Complainant or of tarnishing the Complainant’s trademark. The domain is currently used as a website for their store but a Respondent’s use of a website that is identical or confusingly similar to a Complainant’s trademark for the same types of goods is not a bona fide use as it may either purposely or inadvertently competitively attract customers to the Respondent who might otherwise be looking for the Complainant. While the expressed intentions of the Respondent are laudable they are not sufficient to carry the burden set forth under the policy. The policy is written to protect consumers and businesses from both wrongfully intended actions and the well-meaning yet misguided unintended consequences that arise when businesses in the same stream of commerce, marketing the same or similar goods utilize the same or similar means of identifying those goods. A reading of the facts in a favorable manner towards the Respondent still places this situation in the latter category at best. Accordingly under Policy ¶ 4(c)(ii) Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel finds that Respondents’ use of the disputed domain name is in direct competition with Complainant’s business and that this type of use of a confusingly similar domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Complainant has proven this element.
that Respondent’s failure to answer emails informing Respondent that it was not
authorized to use Complainant’s VIEVIE trademark “shows that they have bad
faith in using our trademark”. While Complainant failed to provide any evidence
of present confusion or diversion of business by Respondent’s operation of a
website advertising and selling of goods in direct competition with Complainant
that may possibly disrupt Complainant’s business has been held to qualify as
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by
attracting Internet users to a website that competes with the complainant’s
business); see also Luck's
Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30,
2000) (finding that the respondent engaged in bad faith use and registration by
using domain names that were identical or confusingly similar to the
complainant’s mark to redirect users to a website that offered services similar
to those offered by the complainant). Thus use in bad faith can be deduced from
the facts and circumstances of Respondent’s actual behavior and the Complainant
is not required to prove that Respondent intentionally registered or used the
mark in bad faith. Furthermore since both parties are
Respondent states that it was unaware of Complainant’s business and trademark until it received notice of the present proceedings which if true indicates that a less than comprehensive search, if any, took place before they decided to register the domain name. While it is equally initially plausible that Respondent felt there was enough differentiation between Complainant’s VIEVIE trademark and the <vievieluxe.com> domain name, Respondent’s correspondence indicates that as a result of the institution of the present proceedings and Respondent’s subsequent review of the ICANN rules that Respondent came to “understand the exclusivity behind a domain name” as well as other aspects of the policy. In that same correspondence, mailed after the documentary submissions time period had passed, Respondent made mention of its search results that followed its revelation seemingly indicating that it did not decide to register the disputed domain based on differentiation but instead based on a misunderstanding of domain name regulations, a lack of knowledge of those regulations or a lack of due diligence. Respondent indicated that its subsequent search results identified many variations and “other users of Vie” and that “one would probably search “boutiques” and a specific area, as oppose[sic] to a specific boutique name” since that is how Respondent searches out shops. Perhaps Respondent’s newfound understanding will trigger more diligent subsequent searches and deliberate decisions as to selecting future domain names thus allowing them to be “held harmless” in those situations as their correspondence presently request. In this instance the proximity of the domain name to Complainant’s mark and the similarity of the goods advertised and sold prevent Respondents from being held harmless and instead supports a finding of registration and use in bad faith. See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vievieluxe.com> domain name be TRANSFERRED from Respondents to Complainant.
Professor Darryl C. Wilson, Panelist
Dated: October 27, 2009
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