Ardashes Ohanessian v. Maria Tashjian
Claim Number: FA1502001604790
Complainant is Ardashes Ohanessian (“Complainant”), represented by Gerard V. Kassabian of Law Offices of Gerard V. Kassabian, a Prof. Corp., California, USA. Respondent is Maria Tashjian (“Respondent”), represented by Marc J. Randazza of Randazza Legal Group, Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <falafelarax.com>, registered with Go France Domains, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 13, 2015; the Forum received payment on February 13, 2015.
On February 13, 2015, Go France Domains, LLC confirmed by e-mail to the Forum that the <falafelarax.com> domain name is registered with Go France Domains, LLC and that Respondent is the current registrant of the name. Go France Domains, LLC has verified that Respondent is bound by the Go France Domains, 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 February 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2015 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@falafelarax.com. Also on February 19, 2015, 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 March 11, 2015.
A timely Additional Submission was received from Complainant on March 16, 2015.
A timely Additional Submission was received from Respondent on March 19, 2015.
On March 26, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a. Complainant’s mark:
i. Complainant owns the FALAFEL ARAX mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,666,790, first use in commerce May 16, 1982, filed May 16, 2014, registered January 6, 2015).
ii. Complainant additionally owns the FALAFEL ARAX mark through common law rights, demonstrated by its continuous use of the mark since the early 1960’s and since at least 1982 in the United States.
iii. Complainant uses the mark in connection with its business as a sandwich shop.
b. Respondent’s infringing activities:
i. Policy ¶ 4(a)(i)
1. The <falafelarax.com> domain name is confusingly similar to Complainant’s FALAFEL ARAX mark, because Respondent has simply removed the space between the terms of the mark and attached the generic top-level domain (“gTLD”) “.com.”
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights and legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the disputed domain name.
3. Respondent has not provided a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent uses the disputed domain name to divert customers to its own website for commercial gain.
iii. Policy ¶ 4(a)(iii)
1. Respondent has acquired the disputed domain name with the sole intent of selling, renting, or transferring the domain name to Complainant or to one of Complainant’s competitors.
2. Respondent uses the disputed domain name to divert Internet users to its own website for commercial gain.
3. Respondent has made no active use of the disputed domain name since it was registered.
B. Respondent
i. Respondent’s registration of the disputed domain name predates any of Complainant’s rights in the FALAFEL ARAX mark.
1. Complainant has also not demonstrated common law rights, as it has not shown volume of sales or anything indicating the reputation of the FALAFEL ARAX mark.
ii. Complainant’s mark consists of common/generic terms.
i. Complainant cannot demonstrate rights or legitimate interests in the mark, because the mark consists of generic terms.
ii. Respondent previously used the disputed domain name in connection with a business in sharing recipes for Armenian dishes. Due to a website crash, Respondent stopped this business, but plans to partake in it again in the future.
iii. Complainant has provided no evidence that Respondent was aware of Complainant and its rights in the FALAFEL ARAX mark when it registered the disputed domain name.
i. Respondent has no intention of selling, renting or transferring the disputed domain name. Respondent has received some offers to buy the disputed domain name, but Respondent has rejected said offers.
ii. Respondent is not intending to profit off of the disputed domain name, as it is not offering competing services, advertising or click-through revenue.
iii. Respondent could not have registered the <falafelarax.com> domain name in bad faith, because it’s registration of the disputed domain name predates Complainant’s rights in the FALAFEL ARAX mark.
iv. Even if Complainant does have rights in the FALAFEL ARAX mark, Respondent was not aware of said rights when registering the disputed domain name.
Additional Submissions
A. Complainant
a. Policy ¶ 4(a)(i)
i. Complainant additionally owns the FALAFEL ARAX mark due to its registration with the Secretary of State of California for the mark.
b. Policy ¶ 4(a)(ii)
i. Respondent claims to have used the <falafelarax.com> domain name in connection with an Armenian recipe sharing website, however Respondent has submitted no evidence of this use.
c. Policy ¶ 4(a)(iii)
i. Respondent claims that she has no intention of selling the <falafelarax.com> domain name and has rejected all offers to buy the disputed domain name, however, Respondent actually accepted Complainant’s offer to buy the disputed domain name.
B. Respondent
a. Policy ¶ 4(a)(i)
i. Complainant has still not provided any evidence of the income or sales in association with its common law trademark.
b. Policy ¶ 4(a)(ii)
i. Respondent did use the disputed domain name for a legitimate purpose when it originally registered the disputed domain name and plans to do so again in the future.
c. Policy ¶ 4(a)(iii)
i. Respondent did not attempt to sell the disputed domain name to Complainant, and the discussed sale did not go through, because Respondent refused to sell.
1. Complainant has failed to mention that his representative was the person who initiated the attempt to purchase the disputed domain name.
Complainant is Ardashes Ohanessian of Beverly Hills, CA, USA. Complainant is the owner of a domestic registration for the mark FALAFEL ARAX per the issuance of a service mark registration by the USPTO on January 2, 2015. Complainant is also the owner of a service mark registration for the state of California which it received in 1981. Complainant moved to the USA from Beirut, Lebanon in 1982 an opened a Middle-Eastern style fast-food sandwich shop under the name Falafel Arax, which shop has been in continuous operation since that time. Complainant claims that it established common law rights in the mark that date back to the opening of its store.
Respondent is Maria Tashjian of Waltham, MA, USA. Respondent’s registrar’s address is Scottsdale, AZ, USA. Respondent registered the disputed domain name <falafelarax.com> in 2004. Respondent offered evidence that it used the name in connection with the offering of Middle-Eastern food recipes on the internet in 2004, and alleges that use continued until 2010.
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.
Complainant states that it uses the FALAFEL ARAX mark in connection with a sandwich shop, in which Complainant is the owner. Complainant claims to own the FALAFEL ARAX mark through its trademark registration with the USPTO (Reg. No. 4,666,790, first used in commerce May 16, 1982, filed May 16, 2014, registered January 6, 2015) and with the Secretary of State of California (Reg. No. 12295 registered August 24, 1981). Complainant believes that these trademark registrations are sufficient in establishing rights under Policy ¶ 4(a)(i) requirements. Complainant’s argument that its registration of the FALAFEL ARAX mark with the USPTO and California establish rights in that mark are supported by previous UDRP decisions. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant’s trademark registrations in Pennsylvania and New Jersey operated as evidence that the complainant had sufficient standing to bring a claim under the UDRP). The Panel here finds that Complainant’s USPTO and California registrations satisfy the requirements of Policy ¶ 4(a)(i). The Panel further finds that Complainant established state service mark rights in the mark dating back to the California registration in 1981.
Additionally, Complainant asserts that it has common law trademark rights in the FALAFEL ARAX mark. Complainant bases its common law trademark rights on its contention that it has continuously used the mark in the United States since 1982. Complainant additionally points to yelp.com reviews of Complainant’s business and Facebook posts that establish customer recognition of Complainant’s FALAFEL ARAX mark. Prior panels have found common law rights in a mark where the mark has taken on a secondary meaning in relation to complainant as evidenced by the mark’s public recognition. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
Proof of secondary meaning generally requires evidence of use, sales, advertising, or similar methods of communication and interaction with the general populace that results in the public’s recognition of the mark as an indicator of a single source for the production of the goods or services to which the mark is affixed. Common law rights are also limited in geographical scope to the area bounded by the evidence provided. The Complainant has failed to provide evidence of any sales or advertising as well as any indication of the extent of use aside from what may be implied from the California service mark registration and physical location of Complainant’s establishment. Isolated Internet commentary alone concerning a business is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public. As the Panel cannot speculate on scope of use or other evidence required to prove secondary meaning the Panel finds the Complainant has failed to establish common law rights dating back to 1982. See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that, without evidence of common law trademark rights, the complainant did not establish rights to the CYBERIMPRINTS.COM mark within the meaning of Policy ¶ 4(a)(i) by registering its company name CYBERIMPRINTS.COM, INC. with the California Secretary of State).
Complainant argues that the <falafelarax.com> domain name is confusingly similar to Complainant’s FALAFEL ARAX mark, because the disputed domain name fully incorporates Complainant’s mark, but removes the space between the words of the mark and adds the gTLD “.com.” Prior panels have generally found that such changes are insignificant in regards to Policy ¶ 4(a)(i) analysis. See 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 here finds that the <falafelarax.com> domain name is confusingly similar to Complainant’s FALAFEL ARAX mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <falafelarax.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant alleges that Respondent is not commonly known by the disputed domain name. Further, Complainant notes that it has never licensed nor authorized Respondent to use the FALAFEL ARAX mark. The Panel notes that the WHOIS information identifies “Maria Tashijan” as the registrant of the disputed domain name. Given the WHOIS information and the Respondent’s failure to provide any contrary evidence regarding this issue, the Panel finds that Respondent is not commonly known by the <falafelarax.com> domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant asserts that Respondent uses the disputed domain name to redirect Internet users to its own website for commercial gain. The Panel notes that the domain name is currently parked and hosted with the parked site including links to numerous types of businesses including food businesses that may be deemed competitors of Complainant if more evidence was presented to substantiate that claim. However such evidence is lacking in the present record. In its additional submission, Complainant discredits Respondent’s argument that it has previously used the disputed domain name for a legitimate purpose in noting that Respondent has submitted no evidence in support of this argument. But Respondent did present evidence, though not extensive, regarding a bona fide offering of goods associated with the domain name.
Respondent asserts that it previously used the <falafelarax.com> domain name for a legitimate purpose, indicating that it holds rights and legitimate interests in the disputed domain name. Specifically, Respondent argues that it used the disputed domain name in connection with a business in sharing recipes for Armenian dishes. The Panel notes that Respondent submitted a screenshot of its website as of 2004 demonstrating this use. Respondent stopped this business allegedly due to its website crashing in 2010, but states that s/he plans to reestablish it. Respondent fails to provide additional evidence of the extent of its use of the disputed domain name in connection with operating an ongoing business during the time period noted. While such evidence would be helpful it is not required under the UDRP. Complainant also questions whether Respondent’s screenshot is wholly fabricated. Although Complainant is entitled to challenge the validity of Respondent’s contentions, the Panel’s duties do not require extensive independent investigation of each of the parties assertions beyond the evidence presented.
Respondent’s registration of the domain name in 2004 was not disputed until recently and Complainant has not shown any common law rights dating back to 2004 or indicated how any common law rights Complainant may have acquired would have extended to Respondent’s geographic area. Complainant’s current rights in the mark, as evidenced by its USPTO registration and therefore being national in scope, were only established in 2015. Complainant’s prior state rights were only established in California.
Respondent has presented minimally sufficient evidence to illustrate that it registered the domain name without knowledge of Complainant’s claimed rights in an identical mark at the time, and it previously used the domain name in connection with a bona fide offering of legitimate goods and services, which it plans to resume in the future. See Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Nat. Arb. Forum Nov. 29, 2006) (finding it a persuasive factor that the respondent had used the disputed domain name for over seven years in concluding that the respondent had rights or legitimate interests in the disputed domain name); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Because the Panel finds that Respondent has rights and legitimate interests in the domain name it is unnecessary for the panel to decide if the Complainant’s mark is generic. The Panel recognizes the presumed validity of the mark based on the current USPTO registration and leaves the issue of whether that was improperly granted or if circumstances are present that rebut that presumption to a later time and more appropriate venue.
The Complainant has not proven this element.
Because the Panel concludes that Respondent has rights or legitimate interests in the <falafelarax.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Complainant has not proven this element.
As the Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <falafelarax.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: April 9, 2015
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