national arbitration forum

 

DECISION

 

YottaMark, Inc. v. Lukasz Chudy

Claim Number: FA1106001392357

 

PARTIES

 

Complainant is YottaMark, Inc. (“Complainant”), represented by David C. Lee of Fitzgerald Abbott & Beardsley LLP, Oakland, California, USA.  Respondent is Lukasz Chudy (“Respondent”),  of Poznan, Poland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <yotta-mark.com>, registered with Tucows, Inc.

 

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.

 

Fernando Triana, Esq. as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 6, 2011 against Contact Privacy Inc. Customer No. 012624895, as Respondent was listed in the WHOIS record.

 

On June 7, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <yotta-mark.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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”). Tucows, Inc. also disclosed the Respondent’s identity, which was secret because the Respondent subscribed to the WHOIS PRIVACY SERVICE offered by the Registrar.

 

On June 7, 2011 Complainant timely filed an additional submission against Lukasz Chudy.

 

On June 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2011 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@yotta-mark.com.  Also on June 8, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.

 

A timely but short response was received on June 8, 2011. The Forum requested on June 22, 2011 to Respondent to confirm that it was his complete response, since the deadline to submit it was June 28, 2011. Therefore, Respondent completed his response on June 20, 2011.

 

On July 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.   Complainant

 

The Complaint is based on the Complainant’s use and ownership of the trademark YOTTAMARK, which is fundamental in its business of traceability and authentication services.

 

Complainant’s main contentions are as follows:

 

1.    The disputed domain name is identical to the trademark YOTTAMARK, except for the fact that it includes a hyphen between the words YOTTA and MARK.  The inclusion of the hyphen, however, does not diminish its confusing similarity to the trademark YOTTAMARK.

 

2.    The heart of the Complainant`s traceability and authentication services is its domain site www.yottamark.com.  This website is not only an information tool to promote the Complainant’s services and brand; it is also the portal by which the traceability services are used by its customers and its customer’s end users.

 

3.    Approximately on May 2011 Complainant had notice of the Respondent’s use of the disputed domain name. The <yotta-mark.com> domain name resolves to a website in which Respondent:

 

3.1. Displays the infringing YOTTA-MARK mark.

 

3.2. Also displays the infringing version of the “Butterfly Design” logo owned and used by Complainant.

 

3.3. Copies the copyright notification and other footer language of the Complainant’s   website.   

 

3.4. Apparently “phishes” for proprietary code information from Complainant’s consumers willing to verify information about goods they purchased.

 

3.5. In all, poses as Complainant by using almost identical marks and inviting consumers to input codes to access traceability information. 

 

B. Respondent

 

Respondent responded to the Complainant’s contentions on June 20, 2011 as follows:

 

1. Respondent is in the business of buying domain names in auctions and reselling them afterwards. The disputed domain name was bought for reselling purposes.

 

2. Respondent admits that his website logo is similar to the “Butterfly Design” logo of the complainant, but asserts it is different because it “is left rotated”.

 

3. He offered to sell the disputed domain name to Complainant

 

C.   Additional Submissions.

 

Complaint filed its complaint against Contact Privacy Inc. Customer No. 0126248953 since it was the name listed as the registrant of the domain name <yotta-mark.com> in the WHOIS record.

 

Respondent subscribed to the WHOIS PRIVACY SERVICE offered by the Registrar Tucows, Inc., which informed to the Complainant that Respondent’s identity could only be revealed after receiving written notification of a dispute regarding the domain name, pursuant to section 39 of the registration agreement.

 

Tucows, Inc. received written notice of the Complaint on June 7, 2011 and immediately removed the WHOIS privacy of Respondent and disclosed his name and contact information.

 

Complainant filed an amended complaint on June 7, 2011 mentioning Lukasz Chudy as the Respondent.

 

FINDINGS

 

Paragraph 15 (a) of the Rules of the Uniform Domain Name Dispute Resolution Policy (“the Rules”) instructs the Panelist to: “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”. Likewise, paragraph 10 (d) of “The Rules” provides that: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

 

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."

 

Likewise, paragraph 10(d) of the Rules for Uniform Domain Name Dispute Resolution Policy, provides that: “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”

 

The Panel wants to make special emphasis to the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The Panel wishes to clarify that the statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence.

 

In addition, paragraph 4(a) of the Policy requires that Complainant proves 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.

 

However, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task:  It is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent.

 

In the Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121 (Mar 30, 2001), the Panel stated that:

 

“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.”

 

Therefore, a Complainant is required to make a prima facie case that the Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of proof shifts to Respondent, who must prove those rights or legitimate interests. If Respondent fails to do so, Complainant is deemed to have met the second element of Policy¶4 (a).

 

Identical and/or Confusingly Similar

 

Policy¶ 4(a) requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.

 

Complainant alleges that it has used the YOTTAMARK mark since September 2004 in conjunction with its goods and services. Complainant was granted the registration of the YOTTAMARK mark by the United States of America Patent and Trademark Office (USPTO) to cover goods in international class 9[1] and services of the international class 42[2]. Due to the success and expansion of its business, Complainant also owns registrations of the YOTTAMARK mark in Argentina, Canada, Peru, Chile and Mexico. The YOTTAMARK mark certificate of registration issued by the USPTO was submitted as evidence, as shown in Exhibit D of the Complaint. 

 

Complainant contends that the Domain Name <yotta-mark.com> wholly incorporates the YOTTAMARK mark, and pursuant to Policy¶4(a)(i) it is identical to its mark.

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

However, the UDRP does not discriminate between registered and unregistered trademarks[3] and thus, it is well established that a Complainant need not own a registered mark to invoke the Policy. It is sufficient in certain common law jurisdictions that Complainant has rights in an unregistered mark as to deserve legal protection. For instance, Complainant’s first use of the YOTTAMARK in the United States of America dates back to September 26, 2004, as stated in the Certificate of Registration No. 3,144,290 issued by the USPTO and included in Exhibit D of the Complaint.  Thus Complainant established rights in the YOTTAMARK mark based on its use in commerce, and also through its registration in the United States of America.

 

The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive[4].. 

 

Complainant’s certificate of registration appears to be incontestable and conclusive evidence of its ownership of the mark and the exclusive right to use it in connection with the stated goods and services.

 

Therefore, the Panelist concludes that Complainant has demonstrated registered rights in the YOTTAMARK mark for purposes of Policy ¶ 4(a)(i).

 

Respondent has the burden of refuting this assumption[5] but in this case he simply made no contentions regarding Policy ¶ 4(a)(1).  

 

Before establishing whether or not the <yotta-mark.com> domain name is identical to the Complainant’s YOTTAMARK mark, the sole Panelist wants to point out that the addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu,” “.org”, ”.co” cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark. Neither the addition of country code top-level domains (ccTLD), i.e., .co., .de, .cr, .es, nor the insertion of a gTLD have a distinctive function.

 

UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks WIPO Case No.D2000-0477, the Panel stated that: “the addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.” 

 

In addition, the sole Panelist agrees with the Complainant on the conclusion that the hyphen included in the middle of the YOTTA and MARK words, is not sufficient to make the disputed domain name different from the YOTTAMARK mark[6]. It is rather a weak attempt to make it different to the eye of the trademark owner, but at the same time similar to the eye of Internet users and the Complainant’s customers of its services and its customers’ end users.

 

Therefore, in the present case, the disputed domain does reproduce entirely the Complainant’s YOTTAMARK mark which makes them identical. The reproduction of the Complainant’s mark in its whole is sufficient grounds to establish that the disputed domain name is identical to the YOTTAMARK mark[7].

 

Rights or Legitimate Interests

 

Policy ¶ 4(c) determines that the following circumstances in particular, but without limitation, if found by the sole Panelist to be present, shall demonstrate the Respondent’s rights or legitimate interest to the Domain Name:

 

(1) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(2) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(3) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name <yotta-mark.com> and actually proves its rights and legitimate interest in it. The sole Panelist accepts this assertion as a prima facie case made by Complainant that shifts the burden of proof to Respondent.

 

Respondent claims in his Responses of June 8 and 20, 2011  that he bought the domain name <yotta-mark.com> to resell it and he offered twice to sell it to Complainant. As a matter of fact, he admitted to be engaged in the business of buying domain name in auctions and reselling them afterwards, and as such, he is engaging in a bona fide offering of goods.

 

The sole Panelist cannot accept this response as evidence of his rights or legitimate interests on the disputed domain name pursuant to Policy ¶ 4(c).

 

To begin with, Respondent failed to assert and to prove that before receiving the written notice of the complaint he was using or preparing a website to use the domain name in connection with a bona fide offering of goods. 

 

The evidence included in the Complaint in Exhibits D and E (copies of the Complainant’s registrations for the YOTTAMARK mark and “Butterfly Device” logo) as well as Exhibit H (printout of Complainant’s website) and Exhibits I and J (printouts of Respondent’s website),  shows that Respondent was indeed trying to pass himself off as Complainant in his website.

 

He used a domain name identical to the Complainant’s YOTTAMARK mark, he also displayed the YOTTA-MARK mark in his website along with the “Butterfly Device” logo of Complainant, and he invited Internet users to verify their YOTTA-MARK code. Respondent did not rebut this evidence.

 

The sole Panelist believes that i) the unauthorized display of the Complainant’s registered marks in the Respondent’s website plus ii) the mimicking of the Complainant’s services in this website is not a bona fide offering of goods. This situation could only lead Internet users to the false impression of an association or endorsement between the Complainant and the Respondent.

 

Since most likely the majority of those diverted Internet users are the Complainant’s customers and their customers, the behavior of the Respondent could also tarnish the YOTTAMARK mark and the Complainant’s reputation.

 

In addition, Respondent’s name is Lukazs Chudy, which has no relation whatsoever with the YOTTA and MARK words that make up the disputed domain name. Respondent also failed to prove his legitimate interest in the domain name as he did not show that he is commonly known by the name “YOTTA-MARK”[8].

 

Respondent denies profiting from the website to which the disputed domain name resolve. The website, as shown in Complaint’s Exhibits I and J (printouts of Respondent’s website), invites Internet users (mainly Complainant’s diverted customers and their costumers) to enter their “YOTTA-MARK” code.  The sole Panelist will address the bad faith matter afterwards. However, as per Policy ¶ 4(c)(iii), the sole Panelist believes that obtaining information about Complainant’s customers and their customers through deception is an illegitimate and even unlawful way of profiting from the disputed domain name.  The Complainant’s tracking and authentication codes have an incontestable commercial value of which Respondent must be aware of. 

 

Thus the Panelist concludes that the Respondent is not making a legitimate noncommercial or fair use of the domain name as per Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

 

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(1)   circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

 

(2)   you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

 

(3)   you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(4)   by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

Complainant contends Respondent registered and has used the disputed domain name in bad faith.

 

After reviewing the arguments of the parties and the evidence submitted in Exhibits D, E, H, I and J of the Complaint, the Panelist concludes that Respondent did register the <yotta-mark.com> domain name in bad faith and has also used it in bad faith. 

 

The fact that Respondent chose the YOTTA and MARK words to make up his domain name <yotta-mark.com> with the hyphen in between them, is evidence per se of his bad faith.  This selection of words was deliberate and not the product of chance. The Panelist can tell from the Respondent’s response that he is not fluent in the English language. This due to the very poor English displayed in his response to the Complaint. Why would he be then familiar with the word YOTTA? According to the Online Merriam Webster dictionary[9], YOTTA means “septillion”. This is not a word commonly used in a conversation. This is scientific vocabulary.  In addition, the sole Panelist conducted on July 15, 2011 a quick search for the word YOTTA in the search engine GOOGLE.  Not only the search showed a small number of results; most of them confirm its scientific use. Therefore, Respondent must have had actual knowledge of the YOTTAMARK mark at the time of its registration (March 2011).

 

In addition, the display in the website of an identical logo to the Complainant’s “Butterfly Device” logo (but “left rotated”) could not be a product of chance. The sole Panelist finds the Respondent’s logo is indeed identical to the Complainant’s registered trademark regardless of their orientation.

 

Even more serious, it is evident for the Panelist that Respondent was aware of the existence of the Complainant’s business, its <yotta-mark.com> website, and its relevance to the traceability and authentication services offered by Complainant. The sole Panelist must insist on his conclusion: Including an invitation to verify the “YOTTA-MARK” code in the Respondent’s website is not a coincidence.  In all, the words that make up the disputed domain name plus the design and the function of the website to which it resolves, show without doubt that the Respondent intended to profit from them. 

 

As mentioned above, Respondent contends that he has not gained profit from the disputed domain name.  Perhaps he has not gained profit from advertising or any other more obvious sources of profit in the Internet.  However, he intended to profit from the disputed domain name and he actually has done so.

 

Such intended profit comes from the confidential information that the Respondent has obtained about Complainant’s customers of its services and its customers’ end users.

 

This information is derived from a contract executed between the Complainant and their customers. No third party, like the Respondent, is entitled to have access to such information and especially not through deception.  This information certainly has commercial value and Respondent must be aware of it.  It shows buying habits, consumer behavior and is useful for market research. There are plenty of potential customers to which Respondent may sell such type of information.

 

Consequently, the sole Panelist truly believes that Respondent planned to register a domain name aimed to attract the Complainant’s customers of its services and its costumers’ end users and to deceive them by displaying marks identical to those of the Complainant, with the clear purpose of obtaining the YOTTAMARK codes of traceability and authentication and selling them afterwards to Internet market researchers or profiting from them in any other manner.

 

Respondent, in addition, in his response showed that he is also willing to profit from the selling of the domain name to its lawful owner.  Respondent must have known that sooner or later, Complainant would be urged to buy the disputed domain name registration because of the impact that the Respondent’s website would have on its customers and its reputation.

 

Therefore, this Panel finds that Complainant satisfied the elements of ICANN 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 <yotta-mark.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Fernando Triana, Esq., Panelist

Dated:  July 15, 2011.