IM Brands, Inc. v. noorinet
Claim Number: FA1212001475392
Complainant is IM Brands, Inc. (“Complainant”), represented by Dennis P. McCooe of Blank Rome LLP, Pennsylvania, USA. Respondent is noorinet (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <isaacmizrahi.com>, registered with HANGANG SYSTEMS, INC. D/B/A DOREGI.COM.
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 December 11, 2012; the National Arbitration Forum received payment on December 11, 2012. The Complainant was received in both the English and Korean languages.
On December 12, 2012, HANGANG SYSTEMS, INC. D/B/A DOREGI.COM confirmed by e-mail to the National Arbitration Forum that the <isaacmizrahi.com> domain name is registered with HANGANG SYSTEMS, INC. D/B/A DOREGI.COM and that Respondent is the current registrant of the name. HANGANG SYSTEMS, INC. D/B/A DOREGI.COM has verified that Respondent is bound by the HANGANG SYSTEMS, INC. D/B/A DOREGI.COM 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 December 17, 2012, the Forum served the Complaint and all Annexes in the Korean language, including a Written Notice of the Complaint in the Korean language, setting a deadline of January 7, 2013 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@isaacmizrahi.com. Also on December 17, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax in the Korean language, 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 January 16, 2013, 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.
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.
Panel notes that the Registration Agreement is in Korean and so the language of the proceedings in Korean. Nevertheless, pursuant to Rule 11(a), Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English. Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and rules and principles of law that Panel deemed applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in ISAAC MIZRAHI and alleges that the disputed domain name is virtually identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith. Whilst the domain name is not in use, Complainant submits that the passive holding of a near identical domain name is itself enough to show “use” in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant has used the trademark ISAAC MIZRAHI in relation to fashion clothing and accessories since 1987.
2. Complainant owns, inter alia, United States Trademark Reg. No. 1,524,672 registered on February 14, 1989 for the word mark ISAAC MIZRAHI.
3. The disputed domain name was registered on September 25, 2002.
4. The domain name is not in use.
5. There is no agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
6. Respondent did not respond to Complainant’s letter of demand.
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."
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.
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)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Complainant provides evidence of several of its United States Patent and Trademark Office trademark registrations. Panel notes that the earliest is United States Trademark Reg. No. 1,524,672 registered on February 14, 1989 for the word mark ISAAC MIZRAHI (referred to already). That registration is not in the name of Complainant. The actual registered owner would appear to be somehow related to Complainant. If there was nothing more in the Complaint, that might not be enough to prove trademark rights by reason of registration alone. Nonetheless, in this case, it is apparent that a number of later registrations with the USPTO stand in the name of Complainant and so Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) holding that “Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”; see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Panel finds that the disputed domain name is legally identical to Complainant’s trademark. The disputed domain name merely omits the space between the two names comprising the trademark and adds non-distinctive gTLD, “.com”, neither being alterations or additions which distinguishes the domain name from the trademark in any significant way so as to avoid confusion (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also 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).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
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 for purposes of paragraph 4(a)(ii) of the Policy:
(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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; 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 trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., 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).
The publicly available WHOIS information identifies Respondent as “noorinet” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
The disputed domain name has not been used at all and so there is no argument of a bona fide offering of goods or services prior to notice of the dispute. Moreover, there is no suggestion in the evidence that Respondent is preparing to use the disputed domain name. Indeed, it has been registered since 2002 without any use.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that case is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Panel observes that Complainant gives no account of why it took more than ten years for these proceedings to be commenced. Were that delay left unexplained in the face of a fully reasoned response, Complaint may have faced some difficulties. In the absence of a response or any such argument of laches, the matter does not arise for serious consideration.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the site or location.’
The Policy requires registration and use in bad faith. Without use of the domain name Panel can not apply paragraph 4(b)(iv) of the Policy. Complainant does not prove common law trade mark rights or make anything more than a bald claim to a reputation in its trade mark and so in Panel’s assessment there is no scope for reliance on the reasoning first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000‑0003, where the panel decided that because of the repute of the complainant’s trade mark, “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”.
The outcome in this case therefore depends on whether it can be said that it is more likely than not Respondent registered the domain name in bad faith for any of the reasons set out in paragraphs 4(b)(i)-(iii). In that regard, the Panel is not willing to apply either of paragraphs 4(b)(ii) or (iii) since there is no evidence before the Panel that the Respondent is a serial cybersquatter (para. 4(b)(ii)), nor could the Respondent be described as a competitor of the Complainant (para. 4(b)(iii)).
On the other hand, there is live question as to whether paragraph 4(b)(i) could be the motive for Respondent’s actions. In that regard, there is a cluster of facts which cast a shadow upon the Respondent. Complainant has used the trademark since 1987. The trademark is a relatively distinctive personal name. There is no ready explanation as to why Respondent should want to use that same name in good faith. The Respondent did not reply to pre-Complaint correspondence from Complaint’s attorneys or to the Complaint itself. The Respondent has not used the domain name in over ten years.
On balance, the Panel finds that the Respondent registered and used the disputed domain name in bad faith pursuant to paragraph 4(b)(i) of the Policy and, accordingly, the Complainant has satisfied the third and final limb 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 <isaacmizrahi.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: January 28, 2013
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