Seth Aurbach v. Kevin Saronski
Claim
Number: FA0304000155133
Complainant is
Seth Aurbach, Hollywood, CA, USA (“Complainant”) represented
by David L. Amkraut, of Law Offices of David L. Amkraut. Respondent
is Kevin Saronski, Kitchener, ON, CANADA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <nlphoto.com>, registered with Enom,
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 18, 2003; the Forum received a hard copy of the
Complaint on April 21, 2003.
On
April 22, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <nlphoto.com> is registered with Enom, Inc. and that
Respondent is the current registrant of the name. Enom, Inc. has verified that
Respondent is bound by the Enom, Inc. 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
April 23, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 13, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@nlphoto.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 20, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <nlphoto.com>
domain name is confusingly similar to Complainant’s N&L PHOTO mark.
2. Respondent does not have any rights or
legitimate interests in the <nlphoto.com> domain name.
3. Respondent registered and used the <nlphoto.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Seth Aurbach, has used the NLPHOTO, NLPHOTO.COM, N&L PHOTOGRAPHY and
N&L PHOTO marks in commerce by way of his website, located at <nlphoto.com>,
since 1996. The above marks are used in connection with the marketing and sale
of Complainant’s erotic photography (in various formats and media, e.g., DVDs,
CDs and prints).
Complainant’s N
AND L PHOTOGRAPHY entity was registered in the State of New York in November
1995. Complainant has invested significant resources in developing and
promoting the N&L PHOTO mark, “eventually attracting steady traffic.”
Respondent,
Kevin Saronski, registered the <nlphoto.com> domain name on
February 16, 1996.* Complainant’s
investigation of Respondent indicates that the subject domain name resolves to
Respondent’s commercial website, which offers goods in competition with
Complainant’s offerings.
Respondent
obtained control of the <nlphoto.com> domain name by acquiring
Complainant’s user name and password, and subsequently changed the domain name
registration and redirected <nlphoto.com> to his own website.
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.
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 has
established rights in the N&L PHOTO mark by conducting business and
offering goods under said mark since 1995. Although Complainant does not hold a
trademark registration and there is little evidence that Complainant has acquired
secondary source identification through its use of the N&L PHOTO mark,
without a Response, Complainant’s assertions will be presumed accurate unless
clearly contradicted by the evidence. See 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”); see also
McCarthy on Trademarks and Unfair
Competition, § 25:74.2, Vol. 4 (2000) (The ICANN dispute resolution policy
is “broad in scope” in that “the reference to a trademark or service mark ‘in
which the complainant has rights’ means that ownership of a registered mark is
not required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the Policy).
Respondent’s <nlphoto.com>
domain name is confusingly similar to Complainant’s N&L PHOTO mark.
Respondent’s domain name incorporates Complainant’s mark in its entirety, but
for the absence of the ampersand. Slight grammatical alterations fail to create
a domain name distinguishable from Complainant’s mark for the purposes of
Policy ¶ 4(a)(i). See PG&E Corp. v. Anderson, D2000-1264
(WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at
<pge.com> because the ampersand symbol is not reproducible in a domain
name); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that
the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT
& LATO mark, because the ampersand symbol (&) is not reproducible in a
URL).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s
submission to the Panel asserts that Respondent does not have any rights or
legitimate interests in the <nlphoto.com> domain name. Because
Respondent has failed to submit a Response, Complainant’s assertions are
unopposed and the Panel accepts all reasonable inferences contained in the
Complaint as true. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (failure to respond allows all reasonable inferences of fact in
the allegations of Complainant to be deemed true).
Additionally,
because Complainant has provided proof of valid, subsisting rights in a mark
that is confusingly similar to the domain name in question and alleged that
Respondent lacks rights in the domain name, the burden shifts to Respondent. By
failing to respond, Respondent has failed to assert any circumstances that
could demonstrate rights or interests in the subject domain name. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
in respect of the domain name, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a Response, Respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name).
Uncontested
circumstances indicate that Complainant was the previous registrant of the <nlphoto.com>
domain name, and that Respondent recently acquired the information
necessary to alter the registration information. Such evidence is relevant in
determining Respondent’s rights in the domain name, or lack thereof. See Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration
of the same domain name is a factor in considering Respondent’s rights or
legitimate interests in the domain name).
Respondent uses the <nlphoto.com> domain name to redirect
Internet users to a commercial website. Respondent makes unauthorized use of
Complainant’s mark in its domain name to attract Complainant’s customers, which
has the affect of diluting the goodwill associated with Complainants N&L
PHOTO mark. Respondent’s opportunistic use of Complainant’s domain name to
offer products in competition with Complainant’s goods fails to establish
rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and
(iii). See Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat.
Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the
domain name to confuse and divert Internet traffic is not a legitimate use of
the domain name); see also N.
Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000)
(finding no bona fide use where Respondent used the domain name to divert
Internet users to its competing website).
Respondent’s
WHOIS information indicates that it is Kevin Saronski, and no information
before the Panel suggests that Respondent is commonly known by the <nlphoto.com>
domain name pursuant to Policy ¶ 4(c)(ii). Complainant’s unrefuted evidence
reveals that the subject domain name is well-known among the relevant consuming
public as identifying Complainant, and its related goods and offerings. As
stated, Respondent acquired the domain name registration without authorization,
and does not have a license from Complainant to make use of the N&L PHOTO
mark. See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie
de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The bad faith circumstances enunciated under Policy paragraph 4(b) are
not exhaustive, and the Policy recognizes that other circumstances can be
evidence that a domain name was registered and used in bad faith. See
Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust
because Respondent’s conduct does not fall within the ‘particular’
circumstances set out in ¶ 4(b), does not mean that the domain names at issue
were not registered in and are not being used in bad faith”).
As stated, Respondent acquired the domain name registration without
authorization from Complainant, and subsequently uses <nlphoto.com> to
ensnare unsuspecting Internet users and Complainant’s customers. Where the
domain name registration was previously held, developed and used by
Complainant, opportunistic registration of the domain name by another party
indicates bad faith, absent any justification that illustrates legitimate use. See
InTest Corp. v. Servicepoint,
FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name
has been previously used by Complainant, subsequent registration of the domain
name by anyone else indicates bad faith, absent evidence to the contrary).
Additionally,
circumstances reveal that Respondent had knowledge of Complainant’s rights in
the N&L PHOTO mark and corresponding <nlphoto.com> domain
name. Respondent’s registration and use of a domain name, despite knowledge of
its infringing nature, constitutes bad faith registration and use under Policy
¶ 4(a)(iii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (inferring
that Respondent had knowledge that the <tercent.com> domain name
previously belonged to Complainant); see also Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse").
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <nlphoto.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
May 29, 2003
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* Although the WHOIS information indicates that registration by Respondent occurred in 1996, the Complaint indicates that at or around February 2003, the registration information was changed from indicating Complainant as the registrant to Respondent. However, whether or not WHOIS information can be updated or changed without the WHOIS information revealing such changes is not a determinative issue in this dispute.