Memoirs, Inc. v. Mahesh Patel
Claim Number: FA0107000098244
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.
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.
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 email@example.com, firstname.lastname@example.org, and email@example.com 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.
Complainant requests that the domain names be transferred from Respondent to 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.
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.
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.
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”).
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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