Memoirs, Inc. v. Mahesh Patel
Claim Number: FA0107000098244
PARTIES
The Complainant is Memoirs,
Inc., St. Paul, MN (“Complainant”) represented by Kerry R.J. Olson, of
Gray, Plant, Mooty, Mooty & Bennett.
The Respondent is Mahesh Patel, Anaheim, CA (“Respondent”) represented by Sunil Brahmbhatt.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are
<imemoirs.org>, <imemoirs.com>, and <imemoirs.net>,
registered with Network Solutions.
PANEL
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.
Honorable Paul A. Dorf (Ret.)
as Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (“the Forum”) electronically on
July 19, 2001; the Forum received a hard copy of the Complaint on July 19,
2001.
On July 24, 2001, Network
Solutions confirmed by e-mail to the Forum that the domain names <imemoirs.org>,
<imemoirs.com>, and <imemoirs.net> are
registered with Network Solutions and that the Respondent is the current
registrant of the name. Network
Solutions has verified that Respondent is bound by the Network Solutions 5.0
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 July 24, 2001, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of August 13, 2001 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@imemoirs.org, postmaster@imemoirs.com, and
postmaster@imemoirs.net by e-mail.
A timely response was received
and determined to be complete on August 10, 2001.
On August 14, 2001, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the
Forum appointed Honorable Paul A. Dorf (ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the
domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that
the domain names at issue are identical or confusingly similar to Complainant’s
trademark; that the Respondent has no rights or legitimate interests in the
domain names; and that the domain names were registered and are being used in
bad faith.
B. Respondent
The Respondent contends that
the domain names at issue are not identical or confusingly similar to
Complainant’s mark as the word "memoirs" is not protected nor is the
Complainant entitled to exclusive use of the word; that it was the Respondent’s
intent to use the domain names as a joint venture or partnership with third
party investors to create a website where persons of Indian origin could post
memoirs of their friends and family, and feature memoirs of famous Indian
celebrities, politicians and other famous persons to celebrate their
achievements; and that as his intent was to target an audience for Indian
memoirs it would in no way interfere with the target audience of the
Complainant in its publishing and writing services.
FINDINGS
The Complainant has been
engaged in the business of interviewing, writing and publishing services using
the trademark I.Memoirs® since 1995.
The Respondent is originally
from India and states he is actively involved in the Indian community in
Southern California. The Respondent
does not identify his business; but states that he wished to joint venture or
partner the concept with third party investors a site where individual persons
of Indian origins could post memoirs of their friends and family and/or have
memoirs of famous Indian celebrities.
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.
Identical and/or Confusingly
Similar
The domain names at issue
contain the Complainant’s entire trademark, merely omitting the period after
the letter "I" and adding the .com
gTLD. See Dow Jones
& Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000)
(holding that the deliberate introduction of errors or changes, such as the
addition of a fourth “w” or the omission of periods or other such generic typos
do not change the Respondent’s infringement on a core trademark held by
Complainant); see also Chernow Communications Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is likewise without legal significance
since use of a gTLD is required of domain name registrants").
Rights or Legitimate Interests
The domain names at issue were
dormant until the Complainant contacted the Respondent in February, 2001, to
discuss a possible purchase of the domain names. The Respondent was not making a bona fide offering of
goods or services on the site, as the site had not been developed. See Vestel Elektronik Sanayi ve
Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that
“¼merely registering the domain
name is not sufficient to establish rights or legitimate interests for purposes
of paragraph 4(a)(ii) of the Policy”); see also Flor-Jon Films, Inc.
v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that
Respondent’s failure to develop the site demonstrates a lack of legitimate
interest in the domain name); see also State Fair of Texas v. State
Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that
Respondent’s failure to develop the site demonstrates a lack of legitimate
interest in the domain name).
After the Respondent stated he
was unwilling to sell the domain names to the Complainant, Complainant, through
counsel, then presented a second offer to the Respondent for the purchase of
the domain names. On April 16, 2001,
Complainant’s counsel sent a second letter to Respondent, and received a
response to this letter on April 23, 2001.
This response stated that the Respondent was going to develop the
websites and currently has them "under construction" which does not
constitute a legitimate non-commercial or fair use of the domain names at
issue. Complainant also argues that
Respondent's lack of use prior to contact with Complainant does not constitute
a legitimate noncommercial or fair use of the disputed domain names under
Policy ¶ 4(c)(iii). See BMW
AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the
domain name where Respondent claimed to be using the domain name for a
non-commercial purpose but had made no actual use of the domain name); see
also Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum
Dec. 24, 2000) (rejecting Respondent’s asserted rights or legitimate interest
in the domain name “roboenterprises-investors.com”, noting that while the
content of Respondent’s web site may enjoy first amendment and fair use
protection, those protections do not equate rights or a legitimate interest
“with respect to [a] domain name” which is confusingly similar to another’s
trademark).
Registration and Use in Bad
Faith
The Respondent held the domain
names at issue for two years following registration, and during that time did
not make any preparations to use the domain names at issue. Shortly after being contacted by the
Complainant, the Respondent labeled the web pages "under construction"
and they remained that way until the filing of this action. See Mondich & Am. Vintage Wine
Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the
Respondent’s failure to develop its website in a two year period raises the inference
of registration in bad faith).
In addition, the Respondent
listed the domain names at issue for sale on a website which offers domain
names for sale. Compare Cruzeiro
Licenciamentos Ltda v. Sallen & Sallen Enter., D2000-0715 (WIPO Sept.
6, 2000) (finding that mere passive holding of a domain name can qualify as bad
faith if the domain name owner’s conduct creates the impression that the name
is for sale), with Wrenchead.com, Inc. v. Hammersla, D2000-1222
(WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an
auction site is evidence of bad faith registration and use), and American
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb.
Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even
if no certain price is demanded, are evidence of bad faith”).
DECISION
As all three elements required
by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this
Panel that the requested relief be granted.
Accordingly, for all of the foregoing reasons, it is ordered that the
domain names <imemoirs.org>, <imemoirs.com>, and <imemoirs.net>
be transferred from the Respondent to the Complainant.
Honorable Paul A. Dorf (Ret.)
Panelist
Dated: August 28, 2001
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