Basic Line, Inc. v. Isaac Shepher
Claim Number: FA0608000785136
PARTIES
Complainant is Basic Line, Inc. (“Complainant”), represented by Morton Chirnomas, of MC Patent Associates, 19 Satinwood Way, Irvine, CA 92612. Respondent is Isaac Shepher (“Respondent”), represented by Ralph C. Loeb, of Krane & Smith, 16255 Ventura Boulevard, Suite 600, Encino, CA 91436.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yaffa.com>,
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of hi knowledge has no known conflict in serving as
Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 25, 2006; the National Arbitration Forum received a
hard copy of the Complaint on September 5, 2006.
On August 29, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <yaffa.com> domain name is
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the
Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified
that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names
Worldwide 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 September 12, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 2, 2006 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@yaffa.com by e-mail.
An
electronic copy of the Response was received and determined to be complete on October 12, 2006. However, the hard copy of the Response was received after the deadline to respond, therefore the Forum does
not consider this Response to be in compliance with ICANN Rule 5(a). Notwithstanding the defective Response, the
Panel has elected to consider it for all
purposes. See Strum v. Nordic
Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) ("Ruling a
Response inadmissible because of formal deficiencies
would be an extreme remedy not consistent with the basic principles of due
process."); see also Bd. of
Governors of the Univ. of
Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may
consider a response which was one day late, and received before a panelist was appointed and any consideration
made).
The parties filed Additional Submissions which were considered for all
purposes.
On October 19, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <yaffa.com> domain name (the “domain name at issue”) is
identical to Complainant’s USPTO registered YAFFA mark.
2. Respondent does not have any rights or
legitimate interests in the above described mark or in the domain name at
issue.
3. Respondent registered and has used the
domain name at issue in bad faith.
B. Respondent
1. Respondent does not deny that the domain
name at issue is identical to Complainant’s YAFFA mark.
2. Respondent has been using the domain name at
issue in such a fashion as not to cause confusion with Complainant’s YAFFA
mark.
3. The domain name at issue was not registered
and is not used in bad faith.
C. Additional Submissions
Complainant filed an Additional Submission which addressed some of the
allegations of the Respondent, provided a declaration of Complainant’s
president and attached certain Internet screen shot exhibits.
FINDINGS
Complainant holds U.S. Trademark Reg. No. 2,078,561 for YAFFA, International Class: 020, for plastic molded household furnishings, namely, mirrors, coat hooks, modular shelving and display racks, dish racks for household use, non-metal tote bins, non-metal nesting bins, non-metal storage crates and clothing hangers, First Use Date: 1984-01-01. Complainant identifies a product line in excess of 150 products, many imprinted with the mark YAFFA, and uses the mark extensively in international marketing and sales efforts. Complainant also is the longtime owner and operator of the domains <yaffainc.com> and <basicline.com>, both of which feature the mark.
Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name have never been in connection with a bonafide offering of goods or services. Respondent (as an individual, business, or other organization) has never been commonly known by the domain name. Respondent has not acquired trademark or service mark rights in YAFFA. Respondent is not making any legitimate noncommercial or fair use of the domain name at issue.
Throughout the five years that Respondent has owned <yaffa.com>, the only use of the domain name has been to redirect Web traffic to a page listing the domain name, among many others, as being available for purchase.
Complainant has on at least two separate occasions made offers to purchase the domain name registration from Respondent for sums of $1,500 and $2,500, far exceeding Respondent’s documented out-of-pocket costs. These have been rejected and countered by Respondent with offers to sell of $4,995 in 2004 and $9,995 in 2006.
As noted previously, Respondent does not contest Complainant’s allegation that thedomain name at issue is identical to Complainant’s registered trademark.
Respondent’s allegations that he has, since registration, contemplated use of the domain name at issue as a site to address women’s issues in Hebrew seem speciousin light of the fact that such a site was just launched very recently, probably after the initiation of these proceedings. Further, it appears that Respondent is responsible for efforts to sell the domain name at issue to Complainant, the registered trademark holder, for an amount greatly in excess of Respondent’s related out of pocket expenses.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 rights in the YAFFA mark through a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,078,561 issued July 15, 1997). Complainant has established rights in the YAFFA mark through this registration under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."). Respondent does not deny this.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is using Complainant’s mark to attract Internet users to Respondent’s website for the commercial benefit of Respondent, particularly through the earning of click-through fees. Respondent has not made 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). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(a)(ii). Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <yaffa.com> domain name and Respondent is not authorized to use Complainant’s mark. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent registered the disputed domain name for the purposes of commercially benefiting from the good will associated with Complainant’s mark. Respondent’s <yaffa.com> domain name is capable of creating a likelihood of confusion as to the source and affiliation of Complainant to the disputed domain name and corresponding website. Such a determination may lend to a finding of bad faith registration and use under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Respondent’s bad faith registration
and use is shown through its offer to sell the <yaffa.com> domain name to Complainant, first for $4,995
and later for $9,995. Such action
constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Neiman
Marcus Group, Inc. v. AchievementTec, Inc.,
FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to
sell the domain name for $2,000 sufficient evidence of bad faith registration
and use under Policy ¶ 4(b)(i)); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679
(Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered
domain names for sale).
The Panel finds that Complainant
has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yaffa.com>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 2, 2006
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