national arbitration forum

 

DECISION

 

Makri S.A. v. Ashantiplc Ltd

Claim Number: FA1210001468099

 

Complainant is Makri S.A. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA.  Respondent is Ashantiplc Ltd. (“Respondent”), represented by John Berryhill, Pennsylvania, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <makri.com>, registered with Backslap Domains, Inc.

 

PANEL

The undersigned certify that they  have acted independently and impartially and to the best of their  knowledge has no known conflict in serving as Panelist in this proceeding.

 

Michael A. Albert as the chair of the three-member Panel along with David H. Tatham, and  Judge Bruce E. Meyerson (Ret.).

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2012; the National Arbitration Forum received payment on October 19, 2012.

 

On October 19, 2012, Backslap Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <makri.com> domain name is registered with Backslap Domains, Inc. and that Respondent is the current registrant of the name.  Backslap Domains, Inc. has verified that Respondent is bound by the Backslap Domains, 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”).

 

On October 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@makri.com.  Also on October 26, 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.

 

A timely Response was received and determined to be complete on November 15, 2012.

 

A timely Additional Submission was received from Complainant and determined to be complete on November 20, 2012.

 

A timely Additional Submission was received from Respondent and determined to be complete on November 26, 2012.

 

An Addendum to the Additional Submission was received from Respondent on November 27, 2012.

 

A  Letter Requesting Panel to Reject Respondent’s Addendum was received from Complainant on November 27, 2012.

 

On December 5, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Michael A. Albert as the Chair of the three-member Panel along with David H. Tatham and Judge  Bruce E. Meyerson (Ret.).

 

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.

 

RELIEF SOUGHT

 

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

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant alleges that it has common law rights in a family of MAKRI trademarks that are used in connection with jewelry, and that it owns the following registrations and pending applications for MAKRI (and marks incorporating MAKRI) in the United States and the European Union:

 

            ILEANA MAKRI (US Ser. No. 85/561505, filed March 6, 2012)

MAKRI (US Ser. No. 85/650738, filed March 5, 2012)

MAKRI (US Ser. No. 85/560635, filed March 5, 2012)

MAKRI S.A. FINE JEWELRY FOR NO SPECIAL OCCASION (US Reg. No. 3,119,114, filed October 24, 2005 and registered on January 16, 2007)

MAKRI S.A. FINE JEWELRY FOR NO SPECIAL OCCASION (EU Reg. No. 0878472, filed September 14, 2005 and registered on October 24, 2005)

 

US Ser. No. 85/650738 and US Ser. No. 85/560635 were published in the Official Gazette dated September 18, 2012.  Per the Complainant, no opposition was filed against those two marks and they will proceed to registration.

 

Additionally, Complainant points to an earlier National Arbitration Forum decision, Makri, S.A. v. DomainJet, Inc., FA 1448539 (Nat. Arb. Forum July 27, 2012), as evidence that it owns strong common law rights in the MAKRI and ILEANA MAKRI marks.

 

Complainant alleges that its rights in the MAKRI mark date back to at least as early as 1996 and that Makri name recognition in connection with jewelry design goes back further.  Complainant alleges that it was founded in 1987 and that its products are sold by numerous stores, including high-end retailers such as Maxfield, Harrods and Barneys, and Browns.  Per the Complainant, the MAKRI mark is distinctive and widely recognized, and MAKRI branded jewelry is worn by such high-profile clients as Uma Thurman, Lenny Kravitz, Ashley Olsen, Jennifer Lopez, and Heidi Klum.  Complainant claims that it has invested substantial sums of money in developing and marketing products and services under its MAKRI mark and has developed substantial goodwill and customer loyalty under the mark.  Per the Complainant, Consumers throughout the world associate the MAKRI mark with Complainant and its jewelry collections. 

 

Complainant operates its website at the <makri.gr> domain name. 

 

Complainant argues that the <makri.com> domain name is identical to Complainant’s MAKRI mark and that Respondent took Complainant’s mark and added the generic top-level domain (“gTLD”) “.com” to create the Disputed Domain Name.

 

Complainant argues that Respondent registered the <makri.com> domain name on February 27, 2002 despite having no statutory or common law trademark rights (or other legitimate interests) in the MAKRI mark or the <makri.com> domain name.  In arguing that Respondent has no right or legitimate interest in the domain name, Complainant asserts that (1) Respondent is not commonly known by the mark, (2) Complainant has not authorized or licensed Respondent to use the MAKRI mark for any purpose, and (3) Respondent’s use of the domain is not in connection with a bona fide offering of goods or services and does not constitute a legitimate noncommercial or fair use.  Regarding this last point, Complainant alleges that the <makri.com> domain name resolves to a website containing advertisements, a search engine,^[1] and links to third-party websites that promote goods and services.  Complainant further asserts that Respondent uses monetization services to generate revenue from the display (and subsequent use) of the links, advertisements, and search capacity at the <makri.com> domain name’s resolving website.

 

Complainant argues that Respondent registered and began using the <makri.com> domain name in bad faith and with knowledge of Complainant’s rights in the MAKRI mark.

 

Complainant argues that an offer to sell the domain is evidence of bad faith, and points to an advertisement on the <makri.com> domain name’s resolving website stating “THIS DOMAIN IS NOT FOR SALE unless you know us.” Complainant alleges that, upon clicking the advertisement, Internet users are redirected to a page where offers to purchase the domain name may be made. 

 

Complainant also argues that Respondent acted in bad faith when registering <makri.com> because the MAKRI mark was well-established and was obviously connected to Complainant and its jewelry at the time of registration, and because Respondent, as “a professional/sophisticated domainer,” had a responsibility to determine whether the registration of the <makri.com> domain name would infringe or violate trademark rights of third parties.

 

Complainant finally contends that Respondent intentionally registered and used the <makri.com> domain in an attempt to capitalize on the goodwill associated with the MAKRI mark, attracting Internet users to its website for commercial gain by creating a likelihood of confusion with the mark.^[2]

 

B. Respondent

 

Respondent alleges that Complainant has not demonstrated any rights in the term “Makri” that existed prior to Respondent’s registration of the <makri.com> domain name. Per the Respondent, Complainant merely provides three unregistered trademark applications and a trademark registration issued long after Respondent had registered the disputed domain name. Additionally, Respondent states that Complainant fails to note that its own country, Greece, is a civil law jurisdiction in which Complainant cannot claim to have acquired common law rights.

 

Respondent further argues that the <makri.com> domain name is not identical to Complainant’s mark.  Respondent asserts that Complainant can only argue confusing similarity with its registered trademark, MAKRI S.A. FINE JEWELRY FOR NO SPECIAL OCCASION, which shares only one common term with the <makri.com> domain name. Per Respondent’s calculation, the disputed domain name is 87 percent dissimilar from the MAKRI S.A. FINE JEWELRY FOR NO SPECIAL OCCASION mark and thus cannot be considered identical or confusingly similar.

 

Respondent argues that the <makri.com> domain name is made up of a descriptive, geographic term only. Respondent alleges that the term “Makri” identifies an Ionian island and at least two towns in Greece, including a resort area near Athens, Greece. Respondent points out that Complainant fails to mention the geographical significance of the MAKRI term in Greece.

 

Respondent states that it uses the <makri.com> domain name in connection with travel services including, over time, links to Greek hotels and exotic travel-oriented subjects. Respondent argues that it has made an appropriate and legitimate use of the <makri.com> domain name for over a decade. Per the Respondent, it presently uses a two-step lander system in which pre-loaded searches are displayed to assist Internet users, but no third-party websites are linked.

 

Respondent claims that it did not acquire the <makri.com> domain name for the primary purpose of later selling the domain name. Respondent alleges that it registered the <makri.com> domain name in 2002 long before Complainant had any basis for a claim over the MAKRI mark. Respondent states that it makes it possible for purchase offers to be made because it recognizes that such a descriptive domain name may be desirable to a business owner willing to compensate Respondent for the loss of the legitimate business interest Respondent has in the <makri.com> domain name.

 

Respondent alleges that it did not have knowledge of Complainant’s suspect rights in the MAKRI mark when it registered the <makri.com> domain name.  Respondent argues that it did not have a duty to exercise “psychic powers” to predict official records of trademark applications three years before they were filed.  Respondent notes that while it can consult online databases, it “does not generally use tarot cards for the purpose of predicting future activities of others nor is such a practice, as far as is known, generally accepted in the intellectual property community.”

 

Respondent also argues that where Complainant’s mark is a common word of geographic term, Complainant must proffer evidence that demonstrates that the Respondent has specifically intended to confuse consumers seeking out Complainant.

 

Respondent finally notes that Complainant has waited over a decade to object to Respondent’s registration and use of the <makri.com> domain name.

 

C. Complainant’s Additional Submissions

 

Complainant reiterates the basis for its claim to rights in the MAKRI mark, emphasizing its profiling in three press publications that point to a connection between Complainant, the MAKRI mark, and jewelry. Complainant argues that it is not a fatal blow to have the MAKRI mark also have geographic significance.

 

Complainant argues that it does not need to prove its rights in the MAKRI mark because the panel in Makri S.A. v. DomainJet, Inc., FA1448539 (Nat. Arb. Forum July 27, 2012) determined that Complainant owns common law rights in ILEANA MAKRI in connection with jewelry dating back to 1987 – long prior to registration of <makri.com> – based on the same evidence Complainant presented in this proceeding.

 

Complainant asserts that Policy ¶ 4(a)(i) requires a showing that the disputed domain name is either identical or confusingly similar, arguing that the <makri.com> domain name is at minimum confusingly similar to the ILEANA MAKRI mark.  Complainant further asserts that notwithstanding the MAKRI mark to which it claims rights, the <makri.com> domain name is confusingly similar to the registered MAKRI S.A. FINE JEWELRY FOR NO SPECIAL OCCASION mark because the dominant portion of this mark is “MAKRI.”

 

Complainant argues that its USPTO common law rights are sufficient under the Policy despite Respondent’s claim that a lack of common law rights in Greece eliminates rights in the mark. Complainant argues that it has established a presence in Greece, however, and is thus associated with the MAKRI mark in that country as well.

 

Per the Complainant, for the first few years after the registration of the <makri.com> domain name, Respondent used the domain name to host links about a variety of goods and services, including “gifts.” Complainant points to the “Shopping & Gifts” link on the March 28, 2003 version of Respondent’s site, which allegedly led consumers to links for jewelry sold by Complainant’s competitors. Further, the current search engine displayed on the <makri.com> domain name’s resolving website produces listings for Complainant’s competitors when searching for “jewelry.” The search term “Makri” produces links to websites that prominently display Complainant’s brand, such as <matchesfashion.com>.

 

Complainant alleges that Internet users will reach the <makri.com> domain name because they are seeking Complainant and know the MAKRI mark and use related search terms such as “jewelry” when using Respondent’s search engine.

 

Per Complainant, as a result of using privacy shields, it is unclear when Respondent actually registered the <makri.com> domain name.

 

Additionally, Complainant argues that Respondent’s varied use of the <makri.com> domain name is evidence of Respondent’s intent to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s purportedly well-known MAKRI mark.

 

D. Respondent’s Additional Submissions

 

Respondent alleges that Complainant’s disregard of the status of its trademark application in Greece needs to be noted, and Complainant merely won a default decision in favor of the alleged rights in the ILEANA MAKRI mark.

 

Respondent alleges that if Complainant was in fact using the MAKRI mark from 1996, this would have been reflected as the date of first use on the Complainant’s USPTO trademark registration, which is 2005.

 

Respondent further alleges that Complainant’s evidence of its rights in the ILEANA MAKRI and MAKRI marks is nothing more than “remarkable puffery” amounting to no more than mention of three articles from 2001 (two in the New York Times, one in New York Magazine).  According to Respondent, these articles in passing refer to Complainant in the following ways: “a diamond-encrusted white gold Star of David by Ileana Makri,” “pendants by Ileana Makri,” and “Baubles from … Ileana Makri.”  Respondent argues that these mentions of the Complainant amount to nothing more than recognition that a designer named Ileana Makri made a few items in 2001, and that the articles do not establish continuous or ongoing use of the mark.

 

Respondent argues that it has never attempted to appear as though it is or was affiliated with Complainant.  Respondent claims that it does not advertise jewelry and nothing related to jewelry would have appeared on the <makri.com> domain name but for Complainant’s manipulation of the search bar.

 

Respondent further argues that Complainant’s claims about Respondent violating Complainant’s rights in 2003 by advertising jewelry is simply a demonstration of “how deep a hole the Complainant is willing to dig.” Respondent argues that Complainant’s first use of the MAKRI mark, by its own records in the trademark application, was in 2005, and thus Respondent could not have infringed upon Complainant’s nonexistent rights. Further, Respondent states, Complainant’s screenshots of Respondent’s purported advertisement of jewelry are from the websites <browsepower.com>, <productsfacts.com>, <offersfinder.biz>, <jewelry4her.com>, and <jewelryme.com>; Respondent alleges that these were not registered until five or more years after 2003 (respectively: May 29, 2012; July 22, 2008; September 27, 2010; July 29, 2012; and December 16, 2010).

 

Respondent reiterates its use of the <makri.com> domain name in relation to Greek travel services.

 

Respondent affirms that it has been the registrant of the <makri.com> domain name since the domain name’s inception in 2002. Respondent suggests that Complainant recognizes this itself by appropriating the false use of the domain name in 2003 to Respondent. Respondent claims it would have provided the Panel with invoices as  evidence of its ownership of the <makri.com> domain name but for the holiday weekend.

 

Respondent reasserts its arguments relating to it being unaware of Complainant (and being unable to be aware of a nonexistent presence in the market).

 

E. Respondent’s Additional Correspondence

 

In reply to Complainant’s accusation that Respondent has not provided any evidence that it has been the owner of the <makri.com> domain name since its creation in 2003, Respondent submits to the Panel an invoice from January 16, 2003 for costs associated with the maintenance of the <makri.com> domain name with the registrar.

 

F. Complainant’s Additional Correspondence

 

Complainant argues that Respondent’s additional correspondence is untimely, having been submitted one day after the deadline for additional submissions, and thus should not be considered.

 

FINDINGS

 

Complainant Makri S.A. (or Makri A.E.) is the owner of the following United States trademark applications: 

 

ILEANA MAKRI – US Ser. No. 85/561505, application to register a standard character mark, filed March 6, 2012.  Applicant provided March 1999 as first use date.

 

MAKRI – US Ser. No. 85/650738, application to register an illustration drawing with a word in stylized form, filed March 5, 2012, published for opposition September 18, 2012.  Applicant provided 2005 as first use date.

 

MAKRI (US Ser. No. 85/560635, application to register a standard character mark, filed March 5, 2012, published for opposition September 18, 2012.  Applicant provided March 1999 as first use date.

 

Ileana Makri, the founder of Makri S.A., is the owner of the following trademark registrations:

 

MAKRI S.A. FINE JEWELRY FOR NO SPECIAL OCCASION – US Reg. No. 3,119,114, registration for an illustration drawing with a word in stylized form, filed October 24, 2005 and registered on January 16, 2007.

 

MAKRI S.A. FINE JEWELRY FOR NO SPECIAL OCCASION – EU Reg. No. 0878472, registration for trademark filed September 14, 2005 and registered on October 24, 2005.

 

The Panel notes that Ileana Makri is not the Complainant in this matter.

 

Respondent Ashantiplc Ltd. is the owner of the domain name <makri.com>.  The domain name is registered with Backslap Domains, Inc.  It was first registered on or about February 27, 2002.

 

For the reasons set forth below, the Panel finds the Complainant has not proven that the domain name <makri.com> should be transferred.

 

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.”

 

As an initial matter, the Panel finds that the doctrine of laches does not apply as a defense in this case.  See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy.”)

 

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.

 

Identical and/or Confusingly Similar

 

Prior to considering whether Complainant has offered sufficient evidence to prove it is the owner of valid trademarks for the family of MAKRI marks, the Panel examines the issue of whether the domain name is identical or confusingly similar to a trademark in which the Complainant claims rights.

 

The Disputed Domain Name <makri.com> combines two elements—(1) the Complainant’s claimed MAKRI mark and (2) the gTLD “.com.”  The Panel finds that the Disputed Domain Name is identical to Complainant’s claimed MAKRI mark, because the gTLD “.com” is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis and insufficient to distinguish the domain name from a trademark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant); Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant’s registered trademark GAY GAMES).

 

In its Additional Submission, Complainant contends that if the Panel relies on either of its claimed non-identical marks for Policy ¶ 4(a)(i) analysis—i.e., the ILEANA MAKRI mark or the MAKRI S.A. FINE JEWELRY FOR NO SPECIAL OCCASION mark—the <makri.com> domain name should be found confusingly similar.  The Panel agrees.

 

Mere deletion of one term in a mark and the addition of a gTLD fails to negate a finding of confusing similarity. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks).  Therefore, pursuant to Policy ¶ 4(a)(i)the Panel finds that the <makri.com> domain name is confusingly similar to Complainant’s claimed ILEANA MAKRI mark.

 

Additionally, the Panel agrees with Complainant’s assertion in its Additional Submission that the dominant portion of the MAKRI S.A. FINE JEWELRY FOR NO SPECIAL OCCASION mark is the word “MAKRI.”  The word “MAKRI” is set in a distinctive typeface and is significantly larger than the remaining words in the mark; it is positioned atop the remainder of the mark, which appears as a small string of words.  Panels have found confusing similarity between a mark and a domain name where the domain name contains the dominant portion of the mark.  See 32Red Plc., Trafalgar Media Limited v. Baysound LLC, D2012-0378 (WIPO April 23, 2012); see also Floyd Mayweather, Jr. v. Raymond Padilla, FA 1202836 (Nat. Arb. Forum July 10, 2008).  Further, the deletion of terms and addition of a generic top-level domain name does not distinguish the domain name from the partial mark contained within it. See Asprey & Garrard Ltd v. Canlan Computing, supra.  The Panel does not find Respondent’s “letter count” / “numerical preponderance” analysis—concluding that “the subject mark of that registration is 87% dissimilar to the term ‘MAKRI’ constituting domain name in dispute”—at all persuasive.  Therefore, the Panel finds that Respondent’s <makri.com> domain name is confusingly similar to the registered MAKRI S.A. FINE JEWELRY FOR NO SPECIAL OCCASION mark under Policy ¶ 4(a)(i).^[3]

 

While Complainant has established that the Disputed Domain Name is identical and/or confusingly similar to the claimed marks, the Panel must determine whether Complainant has offered sufficient evidence that it has rights in these marks.

 

Complainant asserts that it has trademark registrations for the MAKRI S.A. FINE JEWELRY FOR NO SPECIAL OCCASION mark.  The Panel notes however that the two registrations for this mark cited as evidence by Complainant are owned not by Complainant, but by Complainant’s purported founder, Ileana Makri.  Therefore, on the evidence before us, the Panel finds that Complainant has not established rights in the MAKRI S.A. FINE JEWELRY FOR NO SPECIAL OCCASION mark.

 

Additionally, Complainant brings forth evidence of three pending United States trademark registration applications.  Pending applications do not have the same significance as issued trademark registrations.  We agree with Respondent that these applications by themselves do not confer any enforceable rights as against the Respondent.  See Edible Brands, Inc. v. Stefan Schinzinger c/o Schinzinger Kellman, FA 1246518 (NAF April 2, 2009).

 

It is well-established that registering a mark with a trademark authority is one way to demonstrate having rights in said mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).  However, as Complainant correctly contends, registration of a mark is unnecessary if the Complainant can show that it has common law rights in the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).  To establish common law rights in a mark, Complainant must show sufficient evidence that its use of the mark is continuous and ongoing and that secondary meaning has been established.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000).

 

To meet this burden, Complainant has made several assertions in its attempt to support a finding of continuous use and secondary meaning, including the following: (1) Makri S.A. was founded and began selling jewelry in 1987, (2) Makri S.A. products are sold by stores including high-end retailers (3) the MAKRI mark is distinctive and widely recognized, worn by high-profile clients, (4) Makri S.A. invested substantial sums of money to develop and market products and services, and (5) as a result of these investment efforts, the MAKRI mark is associated with substantial goodwill and customer loyalty.

 

Complainant has provided little to no firm evidence, however, to support its assertions.  The evidence provided by Complainant includes: (1) screenshots of its own website, (2) three unregistered applications, one of which is subject to non-final rejection and two of which have been published for opposition, (3) three publications from 2001—two articles in the New York Times and one from New York Magazine—that mention the Complainant’s founder, Ileana Makri, in connection with jewelry, and (4) the prior panel decision in Makri S.A. v. DomainJet, Inc., FA1448539 (Nat. Arb. Forum July 27, 2012), which held that Complainant owns common law rights in ILEANA MAKRI in connection with jewelry dating back to 1987—long prior to registration of MAKRI.COM—allegedly based on the same evidence Complainant presented in this proceeding.

 

As noted before, because the three applications are still pending, the Panel declines to hold that they confer any enforceable rights as against the Respondent. See Edible Brands, Inc. v. Stefan Schinzinger c/o Schinzinger Kellman, supra.  While the Panel does not agree with Respondent’s characterization of the three publications from 2001 as “remarkable puffery” (as they do provide evidence of a connection noted in major publications between the claimed marks, the founder of Complainant, and jewelry), they do not provide sufficient evidence of ongoing use to establish secondary meaning.  Finally, the Panel notes that the prior panel decision finding that Complainant owns common law rights in ILEANA MAKRI in connection with jewelry dating back to 1987 is not binding upon this Panel or upon the Respondent in this case.  That decision was unopposed by the respondent in that case, and the evidence relevant to that case may have differed from the evidence relevant here.

 

In sum, the Panel finds that Complainant has not presented sufficient documentation of Complainant’s use to establish the secondary meaning requisite in acquiring common-law trademark rights.  Accordingly, Complainant has not met its burden of proof for establishing common law rights in the mark pursuant to Policy ¶ 4(a)(i).  See Leah Kando v. Elms Web Services, Inc., FA 1192082 (Nat. Arb. Forum July 2, 2008) (“Complainant has alleged use of the LEAH KANDO mark but failed to provide evidence to establish how long Complainant has utilized the mark in the modeling industry or present the Panel with any documentation of her use, which could establish the secondary meaning requisite in acquiring common law trademark rights.”); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products). 

 

In so holding, the Panel does not exclude the possibility that Complainant may have acquired common-law rights in the MAKRI mark; our holding is simply that sufficient evidence is not before us to support such a finding.  Further, we have not been shown evidence sufficient to determine when any such common-law rights, if they exist, commenced.

 

The Panel notes that because we have found that Complainant has not satisfied Policy ¶ 4(a)(i), we may decline to analyze the other two elements of the Policy.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)). 

 

The Panel does note, however, that evidence of bad-faith registration is sparse to nonexistent.  Even assuming arguendo that Complainant had common law rights in the MAKRI mark at the time of Respondent’s registration in 2002, Complainant has not provided evidence that Respondent had knowledge of Complainant’s purported rights at the time of registration.  Complainant’s assertion that Respondent had a duty to know of Complainant’s rights (by virtue of being a “sophisticated domainer”) is unpersuasive.  Panels have consistently held that constructive notice without any indication of actual knowledge is insufficient for a finding of bad faith. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). 

 

 

DECISION

Complainant not having established the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <makri.com> domain name REMAIN WITH Respondent.

 

Michael A. Albert, Chair

 

David Tatham, Panelist

 

Judge Bruce Meyerson (Ret.), Panelist

 

Dated:  December 19, 2012