YesVideo Inc. v. Robert Popovic
Claim Number: FA0205000113290
PARTIES
Complainant
is YesVideo Inc., San Jose, CA, USA
(“Complainant”). Respondent is Robert Popovic, Vaxjo, SWEDEN
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <yesdvd.com>,
registered with Verisign - Network
Solutions, Inc.
PANEL
On
July 11, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 7, 2002; the Forum received a hard copy of the Complaint
on May 24, 2002.
On
May 10, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the
Forum that the domain name <yesdvd.com>
is registered with Verisign - Network Solutions, Inc. and that Respondent is
the current registrant of the name. Verisign
- Network Solutions, Inc. has verified that Respondent is bound by the Verisign
- Network Solutions, Inc. 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
June 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 24,
2002 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@yesdvd.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
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.” 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <yesdvd.com>
domain name is identical to Complainant’s common law mark.
2. Respondent does not have any rights or
legitimate interests in the <yesdvd.com> domain name.
3. Respondent registered and used the <yesdvd.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant filed a trademark application
with the U.S. Patent and Trademark Office (“USPTO”) for its YESDVD mark on
November 21, 2001. Complainant has used the YESDVD common law mark since November
21, 2001 to refer to its service of converting videotapes into DVD format.
Complainant’s YESDVD common law mark has been used in local and national
advertising as well as on its packaging. Since November 2001, Complainant has
created over 25,000 packaged products bearing the YESDVD mark. Complainant has
invested “hundreds of thousands of dollars” in promoting its products.
Respondent registered the disputed domain
name on December 8, 1999. Complainant’s investigation revealed that
Respondent’s domain name previously directed Internet users to
<greatdomains.com>, a website dedicated to marketing Internet domain
names. However, Respondent’s disputed domain name presently directs users to
Complainant’s <yesvideo.com> website. Respondent cloaks the URL to appear
as though users are still at the <yesdvd.com> website, although as
stated, they have been redirected to Complainant’s <yesvideo.com>
location.
DISCUSSION
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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; and
(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 asserts common law rights in
the YESDVD mark. Complainant has filed a trademark application with the USPTO
and has subsequently continually used the YESDVD mark in its service of
converting data to DVD format. The ICANN dispute resolution policy is “broad in
scope” in that “the reference to a trademark or service mark ‘in which the
complainant has rights’ means that ownership of a registered mark is not
required–unregistered or common law trademark or service mark rights will
suffice.” See McCarthy on
Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); see also SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
Complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist. Rights
in the mark can be established by pending trademark applications).
Complainant has
made a reasonable assertion that it has common law rights in YESDVD.
Furthermore, this assertion has not been refuted because Respondent has failed
to respond, and therefore the Panel may accept Complainant’s assertion to be
true. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc.,
FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true).
Respondent’s <yesdvd.com>
domain name is identical to Complainant’s YESDVD common law mark. The disputed
domain name emulates Complainant’s mark in form and spelling, thereby rendering
Respondent’s domain name identical. Respondent’s disputed domain name deviates
from Complainant’s mark only by the addition of the gTLD “.com” which is
insignificant when conducting an “identical” inquiry under Policy ¶ 4(a)(i). See
Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
Complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent has not submitted a Response
in this matter. Therefore, the Panel may presume that Respondent has no rights
or legitimate interests in respect of the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names). As previously stated, Respondent’s failure to
respond allows all reasonable inferences made by Complainant to be deemed true.
See 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”).
Respondent’s disputed domain name was
registered on December 8, 1999. Complainant’s investigation, which spanned from
November 2001 until the present, revealed that Respondent has made no use of
the domain name in question, apart from attaching it to
<greatdomains.com>. Although Respondent has held the registration for <yesdvd.com>
for over three years, it has failed to develop any function or suggest any
demonstrable purpose for the domain name. Respondent’s passive holding of the
domain name does not constitute a legitimate noncommercial or fair use of the
domain name under Policy ¶ 4(c)(iii). Respondent has also failed to use the
disputed domain name in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint and had made no use of the domain name in
question); see also Vestel
Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(finding that “merely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of the Policy”); see
also Ritz-Carlton Hotel v. Club Car
Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any
notice of the dispute, the Respondent had not used the domain names in
connection with any type of bona fide offering of goods and services); see
also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30,
2002) (finding that despite suffering significant injuries as a result of an
accident, “the Panel would not only need to excuse the Respondent’s past 2+
year delay but also sanction that delay to extend for an indefinite amount of
time into the future. This the Panel will not do”).
There
is no evidence before the Panel that suggests Respondent is commonly known as <yesdvd.com>,
nor is there an obvious connection between Respondent and the domain name.
Complainant’s investigation has revealed that Respondent has made no use of the
domain name that would correspond with an identity, besides redirecting users
to <greatdomains.com>. Therefore, Respondent has failed to demonstrate
rights and legitimate interests in the disputed domain name pursuant to Policy
¶ 4(c)(ii). See Gallup Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when 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 Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
In order for Complainant to succeed under
the ICANN Policy it must establish that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The WHOIS information available to the
Panel states that Respondent originally registered the disputed domain name on
December 8, 1999. Complainant’s YESDVD mark was not applied for until November
21, 2001, and, perhaps more importantly, Complainant’s business did not begin
using the YESDVD mark until that same time. Complainant states in its
Complainant, “These factors lead us to believe that this domain was registered
in bad faith, perhaps in the hopes that a legitimate DVD company would buy the
domain. . .” However, bad faith registration cannot be established by
referencing Respondent’s general intentions when the domain name was registered
nearly two years before Complainant ever used the mark. Therefore, in relation
to this Complainant, Respondent could not have registered the domain name in
bad faith because Complainant’s mark and business did not exist. See Ode v. Intership Ltd., D2001-0074 (WIPO
May 1, 2001) (“We are of the unanimous view
that the trademark must predate the domain name”); see also Aspen
Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding that
it is impossible for Respondent to register disputed domain name in bad faith
if the Complainant's company did not exist at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii)
has not been satisfied.
DECISION
Having failed to establish all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
should be DENIED.
Accordingly, it is Ordered that the Complaint be DISMISSED.
James P. Buchele, Panelist
Dated: July 15, 2002
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