American Friends of Beit Orot Inc. v. Eli Baratz / Eli Baratz
Claim Number: FA1601001656415
Complainant is American Friends of Beit Orot Inc. (“Complainant”), represented by Susan M. Schlesinger of Meister Seelig & Fein LLP, New York, USA. Respondent is Eli Baratz / Eli Baratz (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <beit-orot.com>, registered with Name.com, Inc.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2016; the Forum received payment on January 14, 2016.
On January 15, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <beit-orot.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 January 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2016 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@beit-orot.com. Also on January 15, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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. 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
Complainant is a well-known organization, which seeks to promote the understanding of Jewish principles, ideas, and traditions in order to foster the educational and religious development of young Jewish people. Complainant has obtained a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Registry No. 4,811,789, registered Sep. 15, 2015) for the BEIT OROT mark, which establishes rights in the mark. Respondent’s <beit-orot.com> domain name is confusingly similar to the BEIT OROT mark as it makes the nugatory alterations of adding a hyphen where a space between the words of the mark exists, and appending the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in respect of the <beit-orot.com> domain name. First, while the publicly available WHOIS for the domain lists registrant as “Eli Baratz / Eli Baratz,” and Respondent has failed to submit any evidence to the record, Respondent is not commonly known by the disputed domain. Second, while Respondent uses the <beit-orot.com> domain name to criticize Complainant and tarnish the goodwill associated with the BEIT OROT mark, no bona fide offering of goods or services or legitimate noncommercial or fair use exists.
Respondent has registered and used the <beit-orot.com> domain name under a non-exclusive analysis of Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The <beit-orot.com> domain name was registered on December 24, 2015.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, however, that Complainant failed to carry its burden regard bad faith use and registration.
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(f), 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.”).
The Panel finds that there can be little doubt that the disputed domain name is confusingly similar to Complainant’s registered trademark. Complainant adequately pleads its rights and interests in the registered trademark. Respondent is not known by the disputed domain name. To arrive at the disputed domain name, Respondent merely replaces a space with a hyphen and adds the gTLD “.com.” These attempts are not adequate to distinguish the disputed domain name from Complainant’s registered trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademark.
The Panel also finds that Respondent has no rights or legitimate interests in or to the disputed domain name. The available WHOIS information does not disclose an owner who would have rights or interests in the disputed domain name and Respondent has failed to submit any evidence into the record that would lead the Panel to any other conclusion.
Respondent apparently uses the <beit-orot.com> domain name to criticize Complainant and tarnish the goodwill associated with the BEIT OROT trademark. There also are apparently no bona fide offering of goods or services or legitimate noncommercial or fair use exists. The Panel sees this supported by a screenshot of Respondent’s resolving website, as attached Exhibit C.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
However, the Panel finds that this record lacks any evidence to support a finding of bad faith use and registration. The record is devoid of the usual indicia of bad faith. There is no allegation that Respondent is diverting sales, making money from click-through license arrangements or profiting in any form from use of the disputed domain name. There is no indication that Internet traffic to Complainant is diverted for finance gain by Respondent.
Complainant would have this Panel believe that it is as famous as Donald Trump. Complainant alleges that Respondent has engaged in “opportunistic bad faith.” According to Complainant, this happens when Respondent registers a domain name “with full knowledge that such conduct will obstruct Complainant from registering its trademark as a domain name.” Complaint at 7. To support this claim, Complainant relies on one panel decision. See Donald J. Trump and Trump Hotels & Casino Resorts, Inc. v. Nikolai Golovenkov d/b/a RusskayaReklama.com, Inc., FA 109000099705 (Nat. Arb. Forum Oct. 31, 2001) (finding that use of the domain name <trumpplaza.net>, which is “so obviously connected” with complainant Donald Trump, by someone with no connection to complainant, suggests “opportunistic bad faith”). That is, Complainant believes that it is as distinctive in the market place as TRUMP.
The Panel finds that opportunistic bad faith requires the trademark at issue to be famous. Regardless of one’s feelings about the person, TRUMP is a widely famous trademark. There is no support in the record that shows that Complainant’s trademark, BEIT OROT, is famous, well-recognized, known or anything remotely similar in fame to the TRUMP trademark. It is, therefore, inappropriate to analogize to the TRUMP mark.
The only thing we know from this record is that Complainant is unhappy with someone else for registering a domain name that is very similar to its trademark. To be actionable under the Policy, there needs to be more. Complainant has failed to carry its burden regard bad faith use and registration.
Besides, Complainant’s claim in this regard is not technically accurate. The Respondent’s conduct does not obstruct Complainant from registering its trademark as a domain name. Respondent’s registration of <beit-ordot.com> does not prevent Complainant from registering <beitordot.com> using .com or any other gTLD.
As such, the Panel finds that Complainant has failed to establish its opportunistic bad faith claim. As there is no evidence in this record of diversion of sales or any other bad faith use and registration in the classic sense, the Panel finds that Complainant has not carried its burden regarding bad faith use and registration.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <beit-orot.com> domain name remain with Respondent.
Kenneth L. Port, Panelist
Dated: February 5, 2016
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