IM Brands, Inc. v. Josh Agho
Claim Number: FA1310001522590
Complainant is IM Brands, Inc. (“Complainant”), represented by Timothy D. Pecsenye of Blank Rome LLP, Pennsylvania, USA. Respondent is Josh Agho (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <isaacmizrahilive.com>, registered with GODADDY.COM, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2013; the National Arbitration Forum received payment on October 3, 2013.
On October 3, 2013, GODADDY.COM, LLC confirmed by email to the National Arbitration Forum that the <isaacmizrahilive.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 2013 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@isaacmizrahilive.com. Also on October 4, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the ISAACMIZRAHILIVE mark for apparel, bed linens, jewelry, watches, and accessories. Complainant states that it has used the mark since at least as early as 2010, and it has become world renowned. The mark is the subject of various U.S. trademark registrations, some of which omit the spaces, rendering the mark as ISAACMIZRAHILIVE; and all of which declare January 2010 as the date of first use and first use in commerce. The earliest of these marks to be applied for is number 3,948,520 (ISAAC MIZRAHI LIVE words and design), applied for on July 21, 2009, under filing basis 1B (intent to use); published for opposition on November 3, 2009; and issued on April 19, 2011. Each of the other marks was applied for in December 2009 or later.
Complainant states that Respondent registered the disputed domain name <isaacmizrahilive.com>, which Complainant contends is identical to its mark, without authorization or consent from Complainant. The registry and registrar whois data supplied by Complainant both state a creation date of July 27, 2009, as does the verification furnished by the registrar, GODADDY.COM, LLC. Complainant asserts that given the fame of its mark, Respondent must have been aware of Complainant’s rights at the time of registration. Complainant further asserts that the domain name is being passively held in a manner that prevents Complainant from registering and using the domain name that consumers, the trade, and the media would expect to associate with Complainant’s mark. Complainant alleges that Respondent has made no use or preparation to use the domain name in connection with a bona fide offering of goods or services; that Respondent is not commonly known as Isaac Mizrahi; and that Respondent’s passive holding or warehousing of the domain name is neither a legitimate noncommercial use nor a fair use. Complainant further alleges that in light of Complainant’s prior use of the ISAACMIZRAHILIVE mark in commerce, Respondent had at least constructive knowledge of Complainant’s rights at the time it registered the domain name. In addition, Complainant contends that bad faith may be inferred from the facts that that the domain name is identical to a widely known trademark; that Respondent refused to transfer the domain name upon request, instead demanding payment in excess of its reasonable costs; and that it is difficult or impossible to conceive of a legitimate active use of the domain name by Respondent. Complainant provides a copy of an email message from Respondent dated May 22, 2013, responding to an inquiry from Complainant, and stating in relevant part:
“I’ve owned the name for over 3 years now, It was not recently registered. It operates as a fansite and has attracted very loyal and active users. That being said, if you wish for me to transfer the domain, we can get it done quick and easy through escrow.com for a sum of $2,000 to cover our website expenses over the past years.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
The disputed domain name is identical to a mark in which Complainant has rights, and Respondent lacks rights or legitimate interests in respect of the disputed domain name. However, Complainant has not proved that the disputed domain name was registered and is being used in bad faith.
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 owns trademark rights in ISAACMIZRAHILIVE by virtue of various U.S. trademark registrations. The disputed domain name is identical to this mark, but for the addition of the “.com” top-level domain suffix. The Panel considers the domain name to be identical to Complainant’s mark for purposes of Policy ¶ 4(a)(i). See 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”).
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name is identical to Complainant’s mark, as discussed supra, and Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name. Respondent has not come forward with any evidence to support the claim in his email that the domain name is being used for a “fansite” or to show any other basis for rights or legitimate interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Policy ¶ 4(a)(iii) requires Respondent to show that the disputed domain name was registered and is being used in bad faith. These requirements are conjunctive; both registration and use in bad faith must be proved. See Xbridge Limited v. Marchex Sales, Inc., D2010-2069 (WIPO Mar. 2, 2011).
Respondent registered the domain name on July 27, 2009. Complainant began using the corresponding mark six months later, in January 2010. The only event relating to the mark that predates the domain name is Complainant’s first trademark application, which was filed on July 21, 2009, but not published until November 3, 2009.
The Panel is tempted to speculate that the disputed domain name may well be confusingly similar to other marks owned by Complainant, including marks that predate the domain name; and that Respondent's registration of the disputed domain name may have occurred following some sort of a public announcement of Complainant's intent to adopt the ISAAC MIZRAHI LIVE mark in the future (as occurred in Disney Enterprises, Inc. v. Josh Agho, FA 1373551 (Nat. Arb. Forum Mar. 22, 2011) (finding bad faith based upon registration of <disneydigitalbook.com> domain name on the same day that Disney announced the launching of a website at <disneydigitalbooks.com>). Such speculation is inappropriate here, however, as it would be based upon information not before the Panel.
Based upon the present record, the Panel concludes that Complainant has failed to prove that the disputed domain name was registered in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <isaacmizrahilive.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: October 31, 2013
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