Laline Candles and Soaps Ltd. v.
Claim Number: FA1005001327200
PARTIES
Complainant is Laline
Candles and Soaps Ltd. (“Complainant”), represented by Rotem Regev,
of Zeltner, Heilpern, Pitchon – Law
Offices,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <laline.com>, registered with Fabulous.com Pty Ltd.
PANEL
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.
Panel members names are Diane Cabell, Esq., Judge Ralph Yachnin and Judge Robert T. Pfeuffer as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2010.
On June 2, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <laline.com> domain name is registered with Fabulous.com Pty Ltd. and that the Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 June 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@laline.com. Also on June 3, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 30, 2010.
Complainant submitted an Additional Submission that was received and determined to be in compliance with Forum Supplemental Rule #7 on July 6, 2010. Respondent also submitted an additional response that was received by the Forum in a timely manner on July 13, 2010. Both parties have attached numerous exhibits to their original pleadings and supplemental filings.
On July 9, 2010, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed
Diane Cabell, Esquire, Judge Ralph Yachnin and Judge Robert T. Pfeuffer, as Chair.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts it owns trademark registrations for the LALINE mark with the United Kingdom Intellectual Property Office, the European Union Office of Harmonization for the Internal Market, the Israel Patent Office, and the Norwegian Industrial Property Office, as well as others around the world with six filings. Six of these filings with the Israel Patent Office were issued between September 29, 2003 and July 21, 2005. It alleges that filing with the Norwegian Industrial Property Office was on July 8, 2008 and filing with the European Union Office of Harmonization for the Internal Market was on July 30, 2008. It alleges that it registered its trademark with the United Kingdom Intellectual Property Office on October 24, 2008.
Both Complainant and Respondent agree that Respondent acquired the <laline.com> domain name in 2009 or after. In support of its contention that the disputed domain name is identical or confusingly similar to its trademark, Complainant argues that Respondent’s domain name is identical to the Complainant’s LALINE mark with the exception of the addition of the generic top-level domain (“gTLD”) in the disputed domain name. It contends that the gTLD “.com” does not prevent the disputed domain name from being classified as identical under Policy ¶ 4(a)(i) as it does not distinguish the disputed domain name in any way.
On the issue of rights and legitimate interests, Complainant asserts that it has established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that the burden has shifted to Respondent to show that it does have rights and legitimate interests.
Complainant alleges that Respondent is not commonly
known by the <laline.com>
domain name. The real person in interest
is an individual named Gil Levy, who was the previously registered owner of the
disputed name and transferred the same to the current Respondent under the name
“Los Angeles Lines.” Complainant asserts
that this was done in order to create the impression that the Respondent is a
business whose name is associated with and connected to the disputed domain
name. However, Complainant asserts that
no services or goods associated with the name LALINE are offered at the
disputed domain name and that the Respondent is generally unknown by any trade
name as there is no company or business that exists identified by the name “Los
Angeles Lines.” It is further asserted
by Complainant that the street address listed for the Respondent in the domain
history does not exist in
Complainant contends that Respondent is not using the <laline.com> domain name for a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). It also contends that the disputed domain name resolves to a website that is mostly blank without headings or tabs to navigate the website. It states that the website seems to enable users to log into a “members” site, but there is no indication of the purpose of the website. Complainant argues that after registering as a new member and logging in, it was directed to a page where there were tabs for topics like bookmarks, files, friends, etc., all leading to blank pages, except for one “members” tab which showed only one additional member, that being Gil Levy. In an additional submission, Complainant addresses Respondent’s argument that he is in the midst of developing the social networking site by asserting that Respondent has provided no evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Additionally, Complainant alleges that after being contacted by Complainant’s United States distributor, the Respondent offered to sell the <laline.com> domain name for $60,000, which demonstrates that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant alleges that the registration and use
of the disputed domain name is in bad faith and in violation of Policy ¶ 4(a)(iii) in that upon being contacted by Complainant’s
B. Respondent
Identical or confusingly similar: Policy ¶
4(a)(i).
Respondent makes no contentions with regard to Complainant’s allegations that the disputed domain name is confusingly similar to trademarks in foreign countries held by Complainant. Panel therefore concludes that the issue is conceded by the Respondent and so finds.
Rights and Legitimate Interests:
Respondent asserts that he has rights and
legitimate interests in the <laline.com>
domain name because he acquired it for use in connection with a social
networking website to facilitate carpooling in
Further, Respondent contends in respect to this issue that, contrary to Complainant’s argument, Respondent’s offer to sell the <laline.com> domain name for $60,000 is evidence of his rights and legitimate interests in the domain name instead of evidence against him. He argues that he did not initiate the sales transaction nor was his offer to sell for $60,000 anything other than a response to being contacted about his willingness to sell. Respondent asserts that he decided to ask a high price for the disputed domain name because it was valuable to him for his business plan, and therefore he was not motivated to actually sell it. He says, however, that if an interested buyer was insistent and willing to purchase the domain name at the price specified, Respondent would have sold at that level to compensate him for relinquishing the domain name and to allow funding to purchase another.
Respondent asserts that the terms of the <laline.com> domain name are common
as well as generic and descriptive and therefore, Complainant does not have an
exclusive monopoly on the Internet. He
believes that the disputed domain name is comprised of a geographically
descriptive term “la,” which refers to
Registration and Use in Bad Faith: Policy
¶ 4(a)(iii)
Respondent argues that its offer to sell the disputed domain name does not indicate bad faith registration and use under Policy ¶ 4(b)(i). He first argues that Policy ¶ 4(b)(i) requires that the Respondent registered 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.” He further argues that this condition is not satisfied in this case because he did not know that he was engaged in sales negotiations with the Complainant when he made the offer to sell the disputed domain name. Respondent asserts that he received two separate email requests about buying the <laline.com> domain name and that neither one identified itself as being associated with or acting on behalf of the Complainant. He contends that an offer to sell the disputed domain name in such a situation is permissible under the Policy and does not show bad faith. He asserts that he set such a high asking price because he did not actually want to sell the disputed domain name unless he received an amount significant enough to make up for the loss of the name’s value to his business plan and to allow him to purchase a replacement domain name.
With respect to Complainant’s allegation of
opportunistic bad faith, Respondent counters by arguing that there is no
evidence to support that Respondent specifically targeted Complainant’s
trademark by registering <laline.com> domain name during the period when
Complainant was expanding into the
Respondent contends that the <laline.com> domain name is comprised entirely of common terms that have many meanings apart from use as the single term “laline” that constitutes Complainant’s LALINE mark. Moreover, Respondent contends that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith.
Complainant has alleged that Respondent provided inaccurate registration information when registering the disputed domain name, but Respondent counters that this does not show bad faith registration and use by arguing that he changed the registered name and contact information in order to protect his privacy. He further asserts that he began receiving a large number of unsolicited inquiries about the domain name and did not want to be bothered. Respondent asserts that after now being advised by counsel that he is required to maintain accurate registration data he will correct the record once the disputed domain name is unlocked. He asserts that modification of the WHOIS data to protect privacy and avoid SPAM does not support a finding of bad faith.
C. Additional Submissions
On July 6, 2010, an additional submission was received by the Forum from Complainant as setout above and thereafter an additional submission was received from Respondent on July 9, 2010. All of the material contained in the additional written submissions received from Complainant and Respondent have been fully reviewed and considered by each member of the Panel.
FINDINGS
1. The Panel finds that the disputed domain name is identical or confusingly similar to the disputed domain name <laline.com> under Policy ¶ 4(a)(i).
2. The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that the burden has shifted to Respondent to show that it does have rights and legitimate interests. The Panel finds that Respondent has not shown from the evidence that it has rights or legitimate interests in the subject domain names.
3. With respect to registration and use in bad faith under Policy ¶ 4(a)(iii) the Panel finds for the Complainant, concluding that the Respondent registered and was using the disputed domain name in bad faith according to Policy ¶ 4(b)(i).
DISCUSSION
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.
Respondent makes no contentions with regard to Policy ¶ 4(a)(i) and therefore, the Panel concludes that the allegations made by Complainant are proved.
The Panel has found that Complainant made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that therefore the burden shifted to Respondent to show that it does have rights and 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
With respect to the information supplied by Respondent during the registration process, the Panel finds that the information on the record does not support that Respondent is commonly known by the disputed domain name. The Panel also finds that the WHOIS information indicating an association is insufficient and fails to establish respondent’s rights and legitimate interests in the disputed domain name according to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the dispute domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although the “WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the disputed domain name.”).
As to the question of whether or not Respondent is using the <laline.com> domain name for a bona fide offering of goods and services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), the Panel finds that since the website does not appear to serve a purpose or offer any goods or services, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant’s business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish rights and legitimate interests in the domain name where the respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim).
With respect to the question of whether Respondent offered to sell the domain name for $60,000 in an effort to extort this sum from Complainant, the Panel concludes that Complainant has not provided convincing evidence with respect to this allegation. The Panel finds that the Respondent did not know that he was dealing with a representative of the Complainant’s company when he responded to the two (2) email inquiries about purchase of the disputed domain name. Therefore, the Panel finds that Respondent’s offer to sell the disputed domain name in response to a request does not indicate a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii) under these circumstances. See Kis v. Anything.com Ltd., D2000-0770 (WIPO Nov. 20, 2000) (“Under appropriate circumstances, the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the Policy.”)
On Respondent’s argument that the terms of the <laline.com> domain name are common as well as generic and descriptive, the Panel finds that Complainant does not have an exclusive monopoly on the terms on the internet; however, the Panel is not convinced that this alone can establish Respondent’s rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Spherion Co. v. Neal Solomon, FA 112454 (Nat. Arb. Forum July 22, 2002) (stating that “[i]t has been held in the United States a geographically descriptive name is to be treated as a generic term and does not by its registration with the United States Patent and Trademark Office become absolutely protectable”); see also Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the telecommunications industry,” where a variety of other businesses used the mark in unrelated fields).
The Panel has concluded above that Respondent’s offer to sell the disputed domain name for the price of $60,000 under the circumstances of this negotiation between the parties does not of itself indicate that Respondent registered the disputed domain name in bad faith according to Policy ¶ 4(b)(i) to sell it to Complainant for profit. However, when combined with the other circumstances of the case, it leads the panel to conclude that the registration was in bad faith.
Complainant has argued that the timing of the acquisition of the <laline.com> domain name indicates opportunistic bad faith. The Panel finds that Complainant’s allegation that the transaction between Gil Levy and Respondent, in which Levy sold the disputed domain name to Respondent occurred as a result of Levy obtaining information about Complainant’s plans to expand its business in the United States market is unsupported. The evidence in this regard submitted by Complainant is simply insufficient.
Complainant’s allegations contained in its additional submission state that Gil Levy, an individual, is one and the same as Respondent, and that he manages a company that provides consulting services to one of Complainant’s largest competitors. It its additional submission, Respondent acknowledges awareness of Complainant’s mark. In light of a) awareness of the mark, b) Respondent’s multiple demands for an excessive payment, and c) the lack of any verifiable evidence to support Respondent’s claim that the domain was registered for a bona fide commuter service enterprise, the Panel is not convinced that Respondent had any purpose other than to trade in bad faith on Complainant’s mark. Respondent does not avoid 4(b)(i) simply because he does not know the true identity of the parties from whom he is demanding an excessive fee because making such a demand of all inquirers, as Respondent appears to have done, would necessarily include such an inquiry from the mark owner or its competitor. See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO) Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (“Evidence that a domain name owner provided incorrect information to a domain name registrar supports a finding of bad faith registration.”)
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <laline.com> domain name be TRANSFERRED from Respondent to Complainant.
Diane Cabell, Esq.,
Judge Ralph Yachnin and Judge Robert T. Pfeuffer, Chair.
Dated: July 23, 2010
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