Laurens Delpech v. Dr F N Savas Esq
Claim Number: FA1106001392029
Complainant is Laurens Delpech (“Complainant”), represented by John W. Dozier of Dozier Internet Law, P.C., Virginia, USA. Respondent is Dr F N Savas Esq (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <laurensdelpech.com>, registered with GoDaddy.com, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 3, 2011; the National Arbitration Forum received payment on June 3, 2011.
On June 6, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <laurensdelpech.com> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2011 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@laurensdelpech.com. Also on June 9, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <laurensdelpech.com> domain name is identical to Complainant’s LAURENS DELPECH mark.
2. Respondent does not have any rights or legitimate interests in the <laurensdelpech.com> domain name.
3. Respondent registered and used the <laurensdelpech.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Laurens Delpech, was a founding partner in the French company, FICOFI, and now works as a procurement servicer for that company. Further, Complainant has published three books using his wine expertise from 1996 to 2002. Complainant has been using its name and mark in commerce since 1990 to promote and provide expertise in the area of procurement of fine wines, as well as other positions within the wine industry.
Respondent, Dr F N Savas Esq, registered the <laurensdelpech.com> domain name on June 27, 2010. Respondent’s disputed domain name initially contained copies of Complainant’s credit cards, driver’s license, securities accounts information, and numerous business contracts. Respondent’s disputed domain name was suspended by the registrar in August of 2010 because of abuse and has not been active since that time.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all 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) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant argues, and the Panel agrees, that Complainant need not own a trademark registration to establish rights in its name and mark under Policy ¶ 4(a)(i). The Panel also notes that Complainant must establish, through evidence of use, that it has developed common law rights in such mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
For its part, Complainant alleges that it has been a rather prominent figure in the wine industry for the better part of twenty-one years. Complainant argues that its name and mark of LAURENS DELPECH is well known by wine makers, wine businesses, and wine investors. Complainant goes on to say that it is responsible for the procurement of “approximately 100 million U.S. dollars worth of wine for FICOFI,” a company that it claims to have been a partner in starting in 1990. Complainant asserts that, through its work with FICOFI, it has developed relationships with many of the finest vineyards and winemakers in the world, and through those relationships its name has come to have secondary meaning in the wine industry. Further, Complainant asserts that it has been the author of three wine related books: La Bordeaux published in May 1996; Le Champagne published in May 1996; and Des truffes & des vins: La Passion du terroir published in February 2002. The Panel finds that Complainant has been continuously using its name and mark in commerce since at least 1996. Therefore, the Panel finds that Complainant’s assertions and evidence are sufficient to establish common law rights in the LAURENS DELPECH mark under Policy ¶ 4(a)(i), that date back to at least 1996 when Complainant published his first book. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Further, Complainant argues that Respondent’s <laurensdelpech.com> domain name is identical to Complainant’s LAURENS DELPECH mark. The Panel notes that it is well settled that merely removing the space between the terms of a mark and adding a generic top-level domain (“gTLD”), such as “.com,” is not sufficient to render the domain name distinct from the mark. Therefore, the Panel agrees with Complainant and finds that Respondent’s <laurensdelpech.com> domain name is identical to Complainant’s LAURENS DELPECH mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has contended that Respondent does not have any rights or legitimate interests in the <laurensdelpech.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
Complainant argues that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant contends that the domain name does not reflect any name by which Respondent is commonly known, and Complainant has never authorized or consented to Respondent’s use of Complainant’s name in any way. The Panel notes that the WHOIS information identifies “Dr F N Savas Esq” as the registrant, which the Panel finds to be dissimilar to Complainant’s mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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).
Complainant argues that Respondent originally used the disputed domain name to post pictures and copies of Complainant’s credit cards, driver’s license, securities accounts information, and numerous business contracts in an effort to harm Complainant. Complainant argues that it had a lawyer-client relationship with Respondent, and that, after the relationship eroded, Respondent registered the domain name and posted the above noted content. The Panel finds that such use of a domain name is not 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 eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).
Further, Complainant asserts that Respondent’s website was removed by the Registrar, GoDaddy.com, as it was deemed abusive. Complainant submits e-mail correspondence between it and the Registrar that shows Complainant’s reporting of inappropriate conduct by Respondent which resulted in the suspension of Respondent’s account. Therefore, the website has not resolved to an active website since the Registrar suspended Respondent’s account on August 31, 2010. The Panel finds that such failure to use the domain name for an active website is further evidence that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel notes that the element of bad faith registration and use is not limited to the examples identified under Policy ¶ 4(b). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Therefore, the Panel finds that Respondent’s registration and previous use of the domain name to display personal and confidential information of Complainant is evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the <laurensdelpech.com> domain name in bad faith for the purpose of causing harm to both Complainant and its business by attacking its reputation while disclosing its confidential information as retribution. Complainant notes that Respondent displayed Complainant’s contracts, drivers license, American Express card information, as well as other personal and financial items that harmed Complainant. The Panel finds Respondent’s malicious use of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Rockstar, Inc. v. Belis, FA 1266184 (Nat. Arb. Forum July 20, 2009) (finding that the respondent registered and used the disputed domain name in bad faith when the resolving website contained critical, false, and malicious comments regarding Complainant and its business); see also Ceridian Co. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (determining the malicious use of computer viruses constituted bad faith registration and use).
The Panel further notes that Respondent has failed to use the disputed domain name in connection with an active website since Respondent’s account was suspended by the registrar in August of 2010. The Panel finds that Respondent’s failure to make an active use of the domain name is further evidence of bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <laurensdelpech.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 8, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page