Aria Vatankhah v. Identity Protection Service / Identity Protect Limited / Koosha Hashemi / AVa ltd
Claim Number: FA1203001432522
Complainant is Aria Vatankhah (“Complainant”), California, USA. Respondent is Identity Protection Service / Identity Protect Limited / Koosha Hashemi / AVa ltd (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ariavatankhah.com> and <aria-vatankhah.com>, registered with 123Reg/Webfusion.
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 Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2012; the National Arbitration Forum received payment on March 2, 2012.
On March 5, 2012, 123Reg/Webfusion confirmed by e-mail to the National Arbitration Forum that the <ariavatankhah.com> and <aria-vatankhah.com> domain names are registered with 123Reg/Webfusion and that Respondent is the current registrant of the names. 123Reg/Webfusion has verified that Respondent is bound by the 123Reg/Webfusion 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”).
On March 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2012 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@ariavatankhah.com and postmaster@aria-vatankhah.com. Also on March 21, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is commonly known as Aria Vatankhah and owns a trademark application for the ARIA LAW GROUP mark with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 85,314,285 applied for May 6, 2011).
2. Respondent’s domain names are confusingly similar to Complainant’s name and mark.
3. Respondent is not affiliated with the domain names.
4. Respondent registered the domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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."
Paragraph 4(a) of the Policy requires that 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 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Complainant points out that these Domain Names contain Complainant’s first and last names. Complainant claims rights in the ARIA VATANKAH mark, but does not provide evidence of a trademark registration with any national trademark agency. Under Policy ¶4(a)(i), a complainant is not required to hold a nationally registered trademark to establish rights in a mark. Common law rights are sufficient when a complainant demonstrates secondary meaning associated with a mark. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (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” to support a domain name Complaint under the Policy); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
In determining whether or not Complainant has common law rights in the ARIA VATANKAH mark, the Panel considers Complainant’s factual claims raised in his Complaint. The Panel views the Complaint in a light most favorable to Complainant because it is uncontested. See Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant argues it owns rights in its ARIA LAW GROUP mark. Complainant provides the Panel with three different banner advertisements containing both the ARIA LAW GROUP and the ARIA VATANKHAH marks. Complainant also provides Complainant’s California driver’s license and Complainant’s California State Bar Association card. Complainant’s allegations show he is an attorney and uses his name in advertising his business. His uncontested allegations demonstrate his common law rights in the mark ARIA VATANKHAH. The panel in Asper v. Comm. X Inc., D2001-0540 (WIPO June 11, 2001), found that “where the complainant was successful [in demonstrating common law rights] he or she either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services.” See also Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with complainant that common law trademark rights exist); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding that a “person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law”); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that complainant has common law rights to her name). The Panel finds that Complainant established that his ARIA VATANKHAH mark acquired secondary meaning, which establishes common law rights in the ARIA VATANKHAH mark for the purposes of Policy ¶ 4(a)(i).
By using Complainant’s mark, adding the generic top-level domain (“gTLD”) “.com” and a hyphen, and removing the space between the terms of the mark, Respondent’s disputed domain names are identical to the Complainant’s ARIA VATANKHAH mark under Policy ¶ 4(a)(i). See Chernow Commc’ns, 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 Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not known by the domain names, nor is it affiliated with the domain names, and that Respondent does not provide legal services. The WHOIS information is not similar to either of the disputed domain names. The panel in St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), concluded that a respondent possesses no rights or legitimate interests in a disputed domain name where there is no evidence showing that respondent was commonly known by the disputed domain name. In Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007), the panel stated that the respondent was not commonly known by the disputed domain name after considering all evidence in the record, and the respondent did not dispute the conclusion. Because Respondent is not associated in any way with Complainant, Respondent is not commonly known by either of the disputed domain names and consequently has no rights or legitimate interests in the domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent intends to mislead and divert customers, and tarnish Complainant’s mark by its use of the <ariavatankhah.com> and <aria-vatankhah.com> domain names, because the corresponding websites impersonate Complainant’s identity and redirects Complainant’s clients to another site. The Panel finds that the Respondent, in using confusingly similar domain names to mislead Complainant’s customers, is not making a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (holding that the respondent intended to divert Internet users who sought the complainant’s website to a website belonging to the respondent was not 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)).
Complainant has proven this element.
Complainant argues that Respondent purposely registered the domain name to attract Internet users for its own financial gain by creating the likelihood of confusion with Complainant’s sponsorship or affiliation with the domain names. The Panel finds that the disputed domain names have the potential to confuse Internet users and attract them toward Respondent’s website, which results in commercial gain for Respondent. See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website). The Panel concludes that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <ariavatankhah.com> and <aria-vatankhah.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 30, 2012
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