national arbitration forum

 

DECISION

 

Yasmin Abadian v. Thomas Gibson

Claim Number: FA1310001522396

PARTIES

Complainant is Yasmin Abadian (“Complainant”), represented by Tara M. Vold of Fulbright & Jaworski L.L.P., Washington, D.C., USA.  Respondent is Thomas Gibson (“Respondent”), Maryland, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yasminabadian.com>, registered with GODADDY.COM, LLC.

 

PANEL

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.

 

Hon. Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2013; the National Arbitration Forum received payment on October 2, 2013.

 

On October 2, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <yasminabadian.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name.  GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 October 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@yasminabadian.com.  Also on October 3, 2013, 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, 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 October 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

Complainant’s Contentions

Policy ¶ 4(a)(i)

Policy ¶ 4(a)(ii)

Policy ¶ 4(a)(iii)

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

The Panel notes that Complainant does not have her YASMIN ABADIAN mark registered with a national trademark authority. However, the Panel agrees that trademark registration is not mandatory under the UDRP in order to demonstrate rights in a mark, so long as Complainant illustrates that it has some kind of right in the mark under Policy ¶ 4(a)(i). See 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).

 

Complainant argues that she has used her YASMIN ABADIAN name as the trademark for her residential real estate agency services since 1989. Complainant claims that she has been the leading residential real estate agent in the greater D.C. area for years. Complainant also attests that she and her team have attained the number one spot in the Potomac Village office of Long & Foster, and W.C. & A.N. Miller. Complainant claims that she has used the <yasminhomes.com> domain name since October 28, 2011, to market her YASMIN ABADIAN services. Complainant avers that she has invested a lot of time, effort, and resources into building her YASMIN ABADIAN brand. Complainant states that she has sold hundreds of millions of dollars of real estate under the YASMIN ABADIAN mark throughout the District of Columbia. The Panel notes that at Complainant’s <yasminhomes.com> domain name, Internet users immediately see the masthead reading “YASMIN ABADIAN: Team Potomac: The Best of Both Worlds.” In the case of James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007), the panel found that the continuous use of one’s own name in the open and public promotion and sale of a good or service can establish common law rights in the use of that name as the trademark for said good or service. The Panel agrees that Complainant has established Policy ¶ 4(a)(i) common law rights in the name mark dating back to 1989.

 

Complainant next argues that Respondent has registered the <yasminabadian.com> domain name, which is identical to the YASMIN ABADIAN mark. Complainant argues that the addition of the gTLD “.com” is not relevant when comparing this domain name to Complainant’s mark. The Panel agrees that the domain name is identical to the YASMIN ABADIAN mark under Policy ¶ 4(a)(i), as the only differences between the domain name and the mark are the deletion of spacing and the addition of a gTLD. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

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); 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent is not known by this <yasminabadian.com> domain name. Complainant claims that Respondent has no relationship, affiliation, endorsement, or association with Complainant. Complainant claims never to have authorized or licensed Respondent to use the YASMIN ABADIAN mark in domain names. The Panel notes that the WHOIS information lists “Thomas Gibson” as the registrant of this <yasminabadian.com> domain name. The Panel agrees that as “Thomas Gibson” is not in any way similar to the <yasminabadian.com> domain name, there is no basis for finding that Respondent is known by this domain name under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

 

Complainant explains that Respondent is using the <yasminabadian.com> domain name to host adult oriented material that is explicit and likely to tarnish Complainant’s reputation. Complainant suggests that Internet users may believe that Complainant is associated with, or endorsing, the objectionable and adult-oriented content viewable through this website. The Panel notes that the content available on the <yasminabadian.com> domain name is explicit and adult-oriented content. The Panel agrees that the use of the <yasminabadian.com> domain name to host content wholly unrelated to Complainant’s business is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Furthermore, Complainant argues that the presence of adult-oriented content in itself illustrates a lack of Policy ¶ 4(a)(ii) rights and legitimate interests in the domain name. The Panel in Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003, rejected the possibility that the respondent had any rights or legitimate interests in the domain name because the domain name was being used to promote adult-oriented content. The Panel finds that Respondent’s decision to host adult-oriented content on the <yasminabadian.com> domain name forecloses any finding of Policy ¶ 4(a)(ii) rights and legitimate interests for Respondent.

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant claims that Respondent seeks to extort money from Complainant. Complainant notes that the domain name is posted for the price of $1,500 on a domain vendor website. Furthermore, Complainant claims that it has received several cryptic and bogus solicitations from “potential clients.” Complainant notes that as none of these individuals ever replied back or otherwise responded to Complainant in any fashion, the purpose for these communications was likely to indicate that the <yasminabadian.com> domain name used Complainant’s mark and hosted adult-oriented content, and thus build pressure on Complainant to purchase the domain name. The Panel agrees that by offering the domain name for sale for $1,500 dollars, Respondent has evidenced bad faith in registering and using the domain name to urge Complainant to pay an amount in excess of any out-of-pocket expenses in exchange for control of the domain name. See, e.g., Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name). Thus the Panel finds bad faith under Policy ¶ 4(b)(i).

 

Complainant argues that Respondent intends to profit from the likelihood that Internet users will become confused as to Complainant’s association and/or affiliation with the adult-oriented content. Complainant suggests that the descriptions on the <yasminabadian.com> domain name’s adult-oriented content suggest that Complainant may be associated with this content. Complainant also claims that many of the hyperlinks redirected Internet users to monetized adult-oriented websites. In the case of Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002), the Panel agreed that Policy ¶ 4(b)(iv) bad faith existed when the respondent relied on the complainant’s marks to attract Internet users to its own independent and unrelated offerings. The Panel agrees that, regardless of the adult-oriented content, Respondent’s usage of the YASMIN ABADIAN mark both in the domain name and through the domain name’s website is evidence of Policy ¶ 4(b)(iv) bad faith because Respondent is promoting the resolving website by attracting Internet users through the use of a confusingly similar domain name for Respondent’s own benefit.

 

Complainant also argues that Respondent’s use of the <yasminabadian.com> domain name to host and promote adult-oriented content is strong evidence of Respondent’s bad faith use and registration. The Panel finds that Respondent has acted in Policy ¶ 4(a)(iii) bad faith. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to an adult-oriented website.  The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).

 

Complainant also argues that Respondent had to have known of Complainant’s rights in the YASMIN ABADIAN mark. Complainant notes that Respondent is listed as living in Maryland, about thirty miles away from Complainant’s business nexus. Complainant suggests that Respondent had to have known about YASMIN ABADIAN and her mark, and there is no other reason anyone would register the <yasminabadian.com> domain name solely to promote crude and adult-oriented content. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Therefore, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

Complainant has proven this element.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is ORDERED that the <yasminabadian.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  November 4, 2013

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page