Empire Bonding Agency Inc. v. George Zouvelos / George 'Spartan' Zouvelos, Professional Pirate, Entrepreneur, Domain Names, Sales & Leasing Low Cost
Claim Number: FA1310001527080
Complainant is Empire Bonding Agency Inc. (“Complainant”), represented by Stephen R. Barrese of Dilworth & Barrese, LLP., New York, USA. Respondent is George Zouvelos / George 'Spartan' Zouvelos, Professional Pirate, Entrepreneur, Domain Names, Sales & Leasing Low Cost (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thebailbondqueen.com>, <bailbondqueen.com>, and <michelleesquenazi.com>, registered with Godaddy.Com, LLC.
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.
Hector A. Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2013; the National Arbitration Forum received payment on October 29, 2013.
On October 29, 2013, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <thebailbondqueen.com>, <bailbondqueen.com>, and <michelleesquenazi.com> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. 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 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@thebailbondqueen.com, postmaster@bailbondqueen.com, postmaster@michelleesquenazi.com. Also on October 31, 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.
A timely Response was received and determined to be complete on November 19, 2013.
On November 22, 2013, Complainant filed an Additional Submission in due time.
On November 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hector A. Manoff as Panelist.
On December 4, 2013, the Panel issued an Additional Submission order to grant an additional five-day term to Respondent, since he alleged he did not receive copies of the Complaint and attached documents. The same five-day term was also granted to Complainant after Respondent has filed its Additional Submission.
On December 9, 2013, Respondent filed its Additional Submission in due time.
A timely further Additional Submission by Complainant was received on December 13, 2013.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is the owner of registered trademarks THE BAIL BOND QUEEN and MICHELLE ESQUENAZI, which were both first used as early as 1998 in connection with bail bonding services.
2. Complainant further states that, while the THE BAIL BOND QUEEN mark was actually filed before the registration date of the disputed domain names that include such mark, the MICHELLE ESQUENAZI mark was filed after the registration date of the <michelleesquenazi.com> domain name. However, Complainant claims that it owns common law rights on the MICHELLE ESQUENAZI mark due to its use from as early as 1998.
3. Complainant states that MICHELLE ESQUENAZI identifies a living individual
who is the president and owner of Empire Bonding Agency Inc. Complainant further asserts that Respondent was well aware of this fact since he was a competitor.
4. The disputed domain names <thebailbondqueen.com>, <bailbondqueen.com>, and <michelleesquenazi.com> are confusingly similar to Complainant’s above stated trademarks because they are each identical in their entirety, along with the generic top-level domain, “.com.”
5. Respondent has no rights or legitimate interests in the disputed domain names because he is not commonly known by Complainant’s THE BAIL BOND QUEEN® and MICHELLE ESQUENAZI® marks, nor has Respondent used the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
6. Respondent is not affiliated with Complainant in any way nor is he licensed by
Complainant to use Complainant’s trademarks. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services.
7. Complainant further states that each of the disputed domains are parked with Godaddy.com’s parking services which display links to third-party websites and presumably provide click-through revenue to Respondent.
8. Respondent registered the disputed domain names in bad faith since, at the time he registered them, Complainant’s marks were familiar to countless consumers.
9. Respondent’s purposeful selection of domain names incorporating the
THE BAIL BOND QUEEN® and MICHELLE ESQUENAZI® marks, and use in connection with revenue-generating websites, shows intent to mislead or confuse consumers as to the source or affiliation of the websites.
10. Respondent has solicited the sale of these domain names for more than
$25,000 which is a violation of the Anticybersquatting Consumer Protection Act (ACPA).
11. Respondent was at one time involved in bail bonding services. Respondent
was well aware of Complainant’s company (Empire Bonding Agency) and unsuccessfully filed a motion to oppose through the Trademark Trial and Appeal Board on April 5, 2008.
12. Respondent’s license as a bail bond agent was revoked for “reprehensible” behavior.
13. Respondent’s registration of the aforementioned domain names seems to have been done with malice against a competitor and is further evidence of bad faith.
B. Respondent
1. The domain names <thebailbondqueen.com> and <bailbondqueen.com> were registered prior to Complainant’s registration of the THE BAIL BOND QUEEN trademark.
2. As regards the domain name <bailbondqueen.com>, Respondent states that Complainant did not registered a mark to BAIL BOND QUEEN and he further states that it is a generic name.
3. The domain name <michelleesquenazi.com> was registered prior to Complainant’s registration of the MICHELLE ESQUENAZI trademark.
4. Respondent accuses Complainant of unfair business practices for disputing the ownership of the above stated domain names after they had been used in commerce by him.
5. Respondent states that there is no proven connection between the common name Michelle Esquenazi and Complainant, which is a corporation.
6. Respondent invokes the doctrine of laches and inequitable delay, accusing Complainant of failing to take immediate action.
7. Respondent argues that Michelle Esquenazi is a common name because a Google search returns several individuals with such name.
8. Respondent argues that Complainant has no rights to an individual name Michelle Esquenazi and that such an individual is not a party to this proceeding.
9. Respondent contends that Respondent cannot have trademark rights to generic terms “bail,” “bond,” “queen,” “michelle,” and “esquenazi.”
10. Respondent denies that his conduct falls into the definition of cybersquatting.
11. Respondent argues that he had been using the registered domain names in commerce along with other variations prior to any of Complainant’s asserted trademarks, and he refers to Exhibits E and A of the Response for details about other domain name registrations of his own that include the terms “bail,” “bond,” and “queen.” The earliest of these registrations dates to 12/19/2007.
12. Respondent accuses Complainant of “cyber-legal bullying” for having received a warning letter from Complainant requesting him to transfer the disputed domain names.
13. Respondent challenges Complainant’s accusation of cybersquatting by stating Complainant’s marks are not distinctive, thus, failing to comply with the ACPA requirements.
14. Respondent insists that Complainant’s marks are generic.
15. Respondent accuses Complainant of reverse domain name hijacking and requests that the Panel declares so.
C. Additional Submissions
Complainant (11/22/2013)
MICHELLE ESQUENAZI since it's a corporate entity, e.g., Empire Bonding Agency, Complainant answers that the trademark MICHELLE ESQUENAZI is owned by Complainant, Empire Bonding Agency, Inc., who is a party to this Complaint.
region as Complainant, it would make no sense that Respondent would choose to register a domain name <michelleesquenazi.com> which just happens to be the name of the owner of his competitor Empire Bonding Agency.
Respondent
1. Respondent challenges Complainant’s declared date of first use of its marks THE BAIL BOND QUEEN and MICHELLE ESQUENAZI by arguing that Empire Bonding Agency, Inc. was not incorporated in the state of New York until three years after 1998.
2. Complainant submitted proof of use of its marks before the USPTO under the corporate name Empire Bail Bonds in 2007.
3. Respondent further states that Empire Bail Bonds was never incorporated in the state of New York.
4. Respondent states that “Empire Bail Bonds,” “Michelle Esquenazi” and “The Bail Bond Queen” were never used in commerce and advertising regarding those terms was fabricated for the purpose of complying with the USPTO rules.
5. Empire Bonding Agency, Inc. was not licensed to conduct, advertise, solicit or effectuate bail or any bonding until 3/19/2010. Therefore, any claim of use prior to that time was legally impossible.
6. Complainant obtained a trademark based on fraudulent proofs submitted to the USPTO.
7. Complainant submitted a press article that is irrelevant to these proceedings and, thus, it should be stricken from the record.
Complainant (12/13/2013)
1. Complainant denies having committed fraud by alleging a date of first use when the corporation was not even formed, since the owner name at the time of filing of the trademark may be different from the owner name at the date of first use of the mark, because the right can inure to related companies.
2. Although applicant filed under Empire Bonding Agency Inc. as the owner of the mark, prior to the year 2000, the marks were owned by Michelle Esquenazi, who has been licensed since 1998 and Sim-3 Corp. thereafter.
3. Since Michelle Esquenazi is the President of Empire Bonding Agency, all trademark rights inured from her since first using the marks in interstate commerce in 1998.
4. Complainant denies that it has fabricated evidence of use of the mark and states that the affidavit submitted by Respondent include false statements by ex-employee Iraida Calderon, who was fired for insubordination. Furthermore, Complainant states that Iraida Calderon is currently an employee of Respondent.
5. Complainant states that its marks are not generic but valid since they exist in the Principal Register of the USPTO.
Complainant is a company that provides bail bonding services and owns the registered trademarks THE BAIL BOND QUEEN and MICHELLE ESQUENAZI, both having been used since as early as 1998. Moreover, Michelle Esquenazi is the name of the owner of Empire Bonding Agency, Inc.
Respondent is a former competitor of Complainant (they both do business in the state of New York) and registered the <thebailbondqueen.com> and <bailbondqueen.com> domain names on January 18, 2008 and the <michelleesquenazi.com> domain name on March 14, 2007. These domain names are automatically redirected to YouTube and show videos unrelated to the bail bond business.
Respondent filed oppositions against Complainant’s trademark applications THE BAIL BOND QUEEN and MICHELLE ESQUENAZI but was eventually unsuccessful.
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.
Preliminary Issue: Extended Term to Submit Further Arguments
When the Panel first reviewed this case’s documents, there was correspondence between the Respondent and the Forum from which it seemed that Respondent had not received the Complaint or some of the Annexes, and Respondent asked the Forum to inform the Panel about this situation. The Panel further noted that the Forum sent all the documents to Respondent by email on November 22, 2013.
By the time the Panel knew about this situation, Respondent had already filed a Response (on November 19, 2013) and declared that he filed the Response based on the facts of the Commencement letter sent by the Forum.
Taking into account that the Forum sent all documents to Respondent by email, the Panel believed Respondent’s allegation could be actually true. In reaching this conclusion, the Panel also noted that Respondent had already been engaged in a dispute with Complainant at the USPTO regarding the same trademarks at issue in this arbitration proceeding. Therefore, Respondent could have been aware of the dispute’s main arguments without having the chance of reading the Complaint or its Annexes.
In case of doubt, the Panel decided to allow the Respondent a supplemental term to submit further arguments, after having read the full Complaint. This decision was reached to privilege a fair arbitration proceeding over mere formalities.
Furthermore, in order to give Complainant the same chances of defense, the Panel decided to grant the same term to Complainant, after Respondent had filed its Additional Submission.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.
The Panel also grounds this decision on Section 15 of the Rules:
(a) A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Complainant proved that it owns rights in the THE BAIL BOND QUEEN mark through registration No. 3,533,115 with the USPTO.
Complainant further proved that it has registered its MICHELLE ESQUENAZI mark with the USPTO (Reg. No. 3,783,343).
Respondent registered the disputed domain names <thebailbondqueen.com>, <bailbondqueen.com> on January 18, 2008 and <michelleesquenazi.com> on March 14, 2007, and argues that they had all been registered prior to Complainant’s trademark registrations.
Complainant counterargues that, while THE BAIL BOND QUEEN mark was registered on November 18, 2008, it was actually filed on August 9, 2007. It also recalls that the date of first use in commerce of this mark was November 1, 1998.
Respondent also stated that he began using the “domain names” in 2005, but provides no evidence of how he used domain names that had not been registered by that time, nor any other evidence of having used those names before their registration date.
Respondent also accuses Complainant of having fabricated the proof of use submitted to the USPTO and tries to prove it by filing an affidavit executed by an ex-employee of Complainant, which in turn was objected by Complainant.
It is to be noted that Respondent filed oppositions against Complainant’s trademark applications for THE BAIL BOND QUEEN and MICHELLE ESQUENAZI before the USPTO and was eventually unsuccessful.
Even though Complainant filed evidence that would prove the use of the mark since 1998, the Panel will not go into further analysis of the issue of validity of Complainant’s marks since it is not authorized to do so. Therefore, since Complainant’s marks are registered with the USPTO, the Panel will consider the date of first use declared at the USPTO as true.
As regards the priority date of the mark THE BAIL BOND QUEEN, the Panel concurs with Complainant that it should be noted that this mark was filed before Respondent registered the domain names <thebailbondqueen.com> and <bailbondqueen.com>. In this regard, previous panels have held that a complainant’s rights in a mark through registration with the USPTO date back to the filing date of the trademark application. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Since Complainant filed its trademark application for the THE BAIL BOND QUEEN mark with the USPTO on August 9, 2007, the Panel determines that Complainant has adequately demonstrated its rights in the THE BAIL BOND QUEEN mark pursuant to Policy ¶ 4(a)(i) that date back to August 9, 2007, at least.
The MICHELLE ESQUENAZI mark, conversely, was filed on February 5, 2009, while the <michelleesquenazi.com> domain name was filed on March 14, 2007. However, Complainant claims that it had acquired common law rights on the MICHELLE ESQUENAZI mark as early as 1998.
The MICHELLE ESQUENAZI mark was eventually registered on May 4, 2010 and its date of first use is also November 1, 1998.
The Panel took into account Respondent’s Additional Submission of December 9, 2013, in which he challenged the use of the MICHELLE ESQUENAZI mark by stating that the company Empire Bonding Agency Inc. was not even incorporated in 1998.
However, Complainant filed evidence on December 13, 2013, that shows that Michelle Esquenazi was licensed as from 1998 to provide bail bonding services. Additionally, the Panel notes that there is enough evidence that Michelle Esquenazi is the name of the individual that is licensed to provide bail bonding services.
The Panel concurs with Complainant about the basic principle of trademark law by which the owner name at the time of filing of the trademark may be different from the owner name at the date of first use of the mark because the right can inure to related companies.
Complainant alleged that it used the MICHELLE ESQUENAZI mark in connection with its bail bond services for “nine years prior to the creation of the <michelleesquenazi.com> domain name,” and that the mark corresponds with the personal name of Complainant’s company president, Michelle Esquenazi. It has previously been held that a mark that is a personal name has secondary meaning indicating the complainant’s common law rights where the personal name or corresponding personal image was used to promote the complainant’s goods or services. See Asper v. Comm. X Inc., D2001-0540 (WIPO June 11, 2001) (surveying UDRP disputes concerning the use of personal names, the panel found that “where the complainant was successful he or she either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee…for direct commercial purposes in the marketing of his or her own goods and services”).
As stated above, Complainant has submitted evidence to support its contentions that Complainant has used the MICHELLE ESQUENAZI mark continuously since 1998. Therefore, the Panel holds that Complainant has Policy ¶ 4(a)(i) common law rights in the mark dating back to the start of this continuous use.
Complainant states that the <thebailbondqueen.com> domain name is identical to Complainant’s THE BAIL BOND QUEEN mark, and the <bailbondqueen.com> domain name is confusingly similar to the mark. These allegations were uncontested by Respondent.
Consequently, the Panel holds that the <thebailbondqueen.com> domain name is identical to Complainant’s THE BAIL BOND QUEEN mark under Policy ¶ 4(a)(i). Moreover, the Panel holds that the <bailbondqueen.com> domain name is confusingly similar to Complainant’s THE BAIL BOND QUEEN mark pursuant to Policy ¶ 4(a)(i). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”).
Complainant next argues that the <michelleesquenazi.com> domain name is identical to Complainant’s MICHELLE ESQUENAZI mark because the domain name fully incorporates the mark. This allegation was neither contested by Respondent.
Therefore, the Panel holds that the <michelleesquenazi.com> domain name is identical to Complainant’s MICHELLE ESQUENAZI mark pursuant to Policy ¶ 4(a)(i).
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 alleges that Respondent is not commonly known as <thebailbondqueen.com>, <bailbondqueen.com>, or <michelleesquenazi.com> under Policy ¶ 4(c)(ii). The Panel notes that previous panels have held that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to suggest otherwise. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). In the instant proceedings, the Panel notes that the WHOIS information identifies the registrant of the disputed domain names as “George Zouvelos / George 'Spartan' Zouvelos, Professional Pirate, Entrepreneur, Domain Names, Sales & Leasing Low Cost.” Thus, the Panel determines that the WHOIS information tends to suggest that Respondent is commonly known as “George Zouvelos” and not by the disputed domain names. Furthermore, Respondent does not suggest that he was ever known by these names, and represents that his own bail bond business operated under the moniker “Spartan.” Therefore, the Panel determines that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent has not used 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 under Policy ¶ 4(c)(iii) because the disputed domain names resolve to a parked website that displays a series of links to third-party websites. Complainant alleges that its Exhibit D is a screenshot of the website resolving from the disputed domain names. The Panel notes that according to this screenshot however, the disputed domain names do not resolve to a parked website with generic click-through links, but instead to a YouTube page displaying a video entitled “300 – Full Battle Scene – Full HD 1080p – Earthquake. No Captain. Battle Formations…” See Complainant’s Exhibit D. Based on this evidence, the Panel presumes that the disputed domain names redirect Internet users to the YouTube site displaying this “300 – Full Battle Scene” video segment from the film “300.” The Panel notes that it has previously been held that a respondent’s use of a disputed domain name to redirect Internet users to a website that is unrelated to the complainant is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See 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)”). The Panel concludes that the “300 – Full Battle Scene” YouTube video clip is a website that is unrelated to Complainant’s bail bonding industry. Therefore, the Panel holds that Respondent’s use of the disputed domain names to redirect Internet users to the at-issue YouTube site 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).
Complainant alleges that, as a former competitor of Complainant in the bail bonding services industry, Respondent registered the disputed domain names with actual notice of Complainant’s rights in the THE BAIL BOND QUEEN and MICHELLE ESQUENAZI marks, which is evidence that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Complainant’s Exhibits E-G. The Panel notes that Complainant’s Exhibits F and G tend to show that “Brooklyn bondsman George Zouvelos” lost his license in a proceeding before an Administrative Law Judge in August 2013. The Panel holds that this evidence supports Complainant’s contention that Respondent was formerly a competitor of Complainant in the bail bond industry. Therefore, it is not plausible that Respondent had selected the disputed domain names just by chance, because they were comprised of allegedly generic terms. It is even more evident in the case of the <michelleesquenazi.com> domain name. It is to be noted that Complainant submitted evidence that proves that Ms. Esquenazi was licensed to provide bail bonding services in the state of Ney York since 1998.
The Panel further notes that Complainant’s Exhibits E shows that “George Zouvelos” filed an Opposition to Complainant’s application for the THE BAIL BOND QUEEN trademark with the Trademark Trial and Appeal Board on April 5, 2008. The Panel notes that it has previously been determined that a respondent demonstrates bad faith registration and use under Policy ¶ 4(a)(iii) where it registers the disputed domain name with actual notice of the complainant and its rights in an appropriated mark. See 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). The Panel further notes that previous panels have inferred that a respondent had such actual notice based on the circumstances. See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). In the instant proceedings, the Panel reasonably concludes that in the face of the evidence that Respondent was a competitor of Complainant in the bail bonding industry in the state of New York, the Panel infers that Respondent had actual notice of Complainant and its rights in the THE BAIL BOND QUEEN and MICHELLE ESQUENAZI marks.
While Respondent contends that a finding of bad faith is precluded because it registered the <michelleesquenazi.com> domain name before Complainant began using the MICHELLE ESQUENAZI mark, Complainant alleges that the MICHELLE ESQUENAZI mark corresponds with the personal name of its company president, and that Complainant began using the mark in 1998. The Panel notes that in TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005), the panel concluded that because the respondent’s domain name registration predated the complainant’s trademark filing date and alleged date of first use, “there was no bad faith on the part of [r]espondent when registering the subject domain name.” The Panel actually distinguishes the instant proceedings from TB Proprietary Corp., supra, on the grounds that here, Complainant’s alleged date of first use predates Respondent’s registration of the <michelleesquenazi.com> domain name. Accordingly, the Panel rejects Respondent’s contention that a finding of bad faith registration and use of the <michelleesquenazi.com> domain name is precluded by the concept of predating.
Doctrine of Laches
The Panel finds that the doctrine of laches does not apply as a defense, and correspondingly chooses to disregard Respondent’s assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Request of Inclusion of More Domain Names by Complainant
Complainant, in its Additional Submission dated November 22, 2013, stated that he was not aware that Respondent had registered other confusingly similar domain names and requested that all domain names listed in Exhibits E and A of Respondent’s Response be transferred to Complainant for being confusingly similar to its trademark application THE BAIL BOND KING.
According to the Forum’s Supplemental Rules, Section 7(f), additional submissions must not amend the Complaint or Response.
Therefore, the Panel denies Complainant’s request.
Reverse Domain Name Hijacking
Since the Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong 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 <thebailbondqueen.com>, <bailbondqueen.com>, and <michelleesquenazi.com> domain names be TRANSFERRED from Respondent to Complainant.
Hector A. Manoff, Panelist
Dated: December 26, 2013
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