IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS
Claim Number: FA1408001577032
Complainant is IAFT International LLC (“Complainant”), represented by Charles Carreon, Arizona. Respondent is MANAGING DIRECTOR / EUTOPIAN HOLDINGS (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iaft.com>, registered with eNom, Inc.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2014; the National Arbitration Forum received payment on August 26, 2014.
On August 27, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <iaft.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 August 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2014 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@iaft.com. Also on August 29, 2014, 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 September 18, 2014.
Complainant submitted an Additional Submission which was found compliant on September 24, 2014. Also, on September 29, 2014, Respondent submitted an Additional Submission which also complied with the requirements of Supplemental Rule 7. Both submissions were considered by the Panel in rendering its decision below.
On September 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates the International Academy of Film and Television, for which it runs five campuses around the world. Complainant nurtures creative talent in conjunction with film and television industry professionals.
Complainant has obtained several registrations, including with the United States Patent and Trademark Office ("USPTO"), for its IAFT service mark, which was first used in commerce in 2003. Complainant has spent $1.75Million in promotion of its mark over the past eleven years. Also, Complainant has registered and utilizes the <iaft.net> domain name to assist in its operations.
The disputed domain name, <iaft.com>, is identical to Complainant's IAFT mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use the IAFT mark in any way. Respondent is not commonly known as the disputed domain name. Respondent is not using the name in connection with a bona fide offering of goods or services. It is used to host hyperlinks to third party websites, some of which offer online gambling, which is illegal in Respondent's target market, the United States.
The disputed domain name was registered and is being used in bad faith. Respondent offers pay-per-click advertising links on the website to which the disputed domain name resolves, and thus is intentionally deriving commercial gain through confusion between the disputed domain name and Complainant's IAFT mark. At no time during its ownership of the disputed domain name has Respondent offered content (or website links) that in any way relate to the "IAFT" acronym.
B. Respondent
The disputed domain name was registered in good faith by Respondent in 2000. This precedes Complainant's interest in the IAFT mark by several years, and Respondent had no knowledge of Complainant at the time of registration.
The disputed domain name has a nautical theme, and Respondent intended upon registration to develop the name as a sailing and boating resource. This has been a slow process during which Respondent has sought to add relevant content.
Advertising code is placed on Respondent's website to defray costs. Respondent has no control of and does not profit from initial web pages generated by the Registrar.
As evidenced by correspondence beginning in December, 2005, Complainant, or its predecessor, Bigfoot Entertainment, has constantly attempted to buy the disputed domain name from Respondent. Complainant never referred to any trademark rights in pursuing such acquisition.
The "IAFT" acronym is generic in nature, and can refer to businesses as diverse as family therapy and forex trading.
Respondent registered many domain names around 2000 and has been slowly developing the same to reflect Respondent's personal interests and hobbies.
Complainant is using the UDRP process in bad faith to acquire the disputed domain name, when Complainant knows it has no enforceable trademark rights.
C. Complainant's Additional Submission
Complainant has achieved a secondary meaning for its IAFT mark as evidenced by a Google search related to that mark.
Respondent's contention that it intended or intends to use the disputed domain name for nautical pursuits is a ruse. The website connected with the name has been unvarying and without substance.
Respondent' true intent has always been to sell the disputed domain name to Complainant at the highest price possible. Correspondence in the Response indicates that Respondent sought to push that price to more than $20,000.
Over the last seven years, Respondent has sought to conceal its identity with respect to ownership of the disputed domain name. With its many registrations, Respondent is clearly in the domain name business for profit.
D. Respondent's Additional Submission
Respondent's plans to use the disputed domain name for a sailing and boating resource is not, as Complainant's claims, a "ruse," but conforms to Respondent's continuing interest in those endeavors as exemplified by its aquatic organization memberships going back to 1987.
Various pictures of sailing and/or boating scenes have been posted at Respondent's website that is connected to the disputed domain name.
Complainant has offered no evidence of public confusion between the disputed domain name and Complainant's operations.
Google searches show many users, beyond Complainant, of the "I. A. F. T." acronym throughout the world.
Email evidence indicates that it was Complainant who was persistently soliciting Respondent about a sale of the disputed domain name, not vice versa. Such evidence never refers to trademark issues or bad faith use of the name.
Complainant, the International Academy of Film and Television, has operated since 2003 to nurture aspiring film and television artists and producers on an international basis, utilizing five campuses around the world. To further its mission, Complainant has secured registrations, including with the USPTO (Reg. No. 4536246; registered May 27, 2014), for its service mark, IAFT, which is an acronym corresponding to Complainant's initials.
Respondent, the owner of the disputed domain name, <iaft.com>, registered that name on February 5, 2000. Complainant and Respondent have engaged in correspondence concerning purchase of the disputed domain name, but throughout its existence it has been used to host websites that contain hyperlinks to third party websites, some of which serve as online gambling outlets.
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.
Complainant has satisfied the service mark ownership requirements of Policy ¶ 4(a)(i) by delivery to the Panel appropriate evidence (Annex D) of Complainant's USPTO registration for the IAFT mark. See Oceaneering Int'l Inc. v. Kolcak, DCO2010-0033 (WIPO Dec. 6, 2010) ("The Panel finds that Complainant has established rights in its OCEANEERING mark through its trademark registration with the USPTO, pursuant to Policy paragraph 4(a)(i)"); see also W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (“...the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent argues that, at the time of the disputed domain name registration, Complainant had no rights in the IAFT service mark. However, the Panel notes a consensus of prior UDRP panels that rights acquisition prior to such a time is not a prerequisite for success under Policy ¶ 4(a)(i), and that a complainant need only show conclusively that it possesses the aforementioned rights when it files its complaint under the Policy. The Panel will abide by that consensus in its ruling. See The Baltimore Coffee & Tea Co., Inc. v. Laksh Internet Solutions Pvt. Ltd., FA 1198434 (Nat. Arb. Forum July 28, 2008) ("... it is not necessary for Complainant's mark to predate the registration of the disputed domain name in order to establish enforceable rights pursuant to Policy ¶ 4(a)(i)."); see also Esquire Innovations, Inc. v. Iscrub.com; and Vertical Axis, Inc, D2007-0856 (WIPO Oct. 5, 2007) ("...paragraph 4 of the Policy does not require proof of any particular time at which the Complainant must have trademark or service mark rights."); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071(Nat. Arb. Forum Mar. 5, 2007.
The Panel concludes that the disputed domain name, <iaft.com>, is identical to the IAFT mark, because the four letters of each are in the exact same sequence and the lower casing, as well as the addition of the ".com" suffix, are inconsequential. See Abt Electronics, Inc. v. Gregory Ricks, FA 904239 (Nat Arb. Forum Mar. 27, 2007) ("The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain ('gTLD') is irrelevant when conducting a Policy ¶ 4(a)(i) analysis."); see also Daedong-USA, Inc., Kioti Tractor Div. v. O'Bryan Implement Sales, (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”)
As a result, the Panel finds that Complainant has proved that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.
In the Panel's view, Complainant has presented at least a prima facie case that Respondent possesses no rights or legitimate interests in the disputed domain name. Complainant correctly asserts that there is no reason for the Panel to believe that Respondent, Eutopian Holdings, has been commonly known as <iaft.com>. Moreover, Complainant has claimed, without contradiction from Respondent, that it has received no authorization from Complainant to use its IAFT mark. Finally, the Panel has concluded above that the disputed domain name and that mark are identical. Therefore, facing such a prima facie case, Respondent is called upon to offer clear and convincing rebuttal evidence. See Ustream.TV, Inc. v. Vertical Axis, Inc, D2008-0598 (WIPO July 29, 2008) ("...it is the consensus view of WIPO UDRP panels that the threshold for the complainant to prove a lack of rights or legitimate interests is low, and that, once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent."); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent has contended that it intended to develop the disputed domain name in connection with a website designed to relate to Respondent's interest in nautical pursuits, such as sailing and boating. However, the Respondent presents no evidence that it ever constructed such a site and little evidence of its demonstrable preparations to do so. Respondent submits only a few pictures and avers that such efforts would take a long time. The Panel believes that more than a decade would be more than sufficient time to realize such a plan, if indeed that was ever Respondent's real intent. Instead, Complainant contends, and Respondent concedes, that the disputed domain name has been used over the years to host various websites that commonly offer only links to third party sites, some of which offer online gambling venues. In line with previous Policy panels, the Panel believes that such use constitutes neither a bona fide offering of goods and services per Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the name per Policy ¶ 4(c)(iii). See Tumblr, Inc. v. Dutton, DAU2013-0017 (WIPO July 30, 2013) (finding no compliance with Policy ¶¶ 4(c)(i) or 4(c)(iii) where the disputed domain name was nearly dormant and previously used to provide linkage to an online gambling website); see also Developing Hearts Systems, Inc. v. Mihail Rudenko c/o Miru, 915557 (Nat. Arb. Forum Mar. 23, 2007) ("Respondent is using the <bondingwithbaby.org> domain name to display hyperlinks promoting various online gambling websites...completely unrelated to Complainant’s business, and Respondent presumably receives click-through referral fees for each redirected Internet user. Therefore, the Panel finds Respondent’s use of the <bondingwithbaby.org> domain name does not constitute a bona fide offering of goods and services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).").
Respondent's contention that "IAFT" is a generic term does not resonate with the Panel. "IAFT" is not a common word in any language with which the Panel is familiar, and both parties seem to agree that it is actually an acronym. The Panel does not believe that "IAFT" is an acronym for any constantly used sequence of common words not related to a specific organization or owner (e.g., like USB, TGIF or BLT). Thus, the Panel believes that Respondent is hard pressed to establish that the website linkage connected to the disputed domain name in any way relates to the common meaning of "IAFT," as there is no common meaning for "IAFT."
As Respondent has not presented a clear and convincing rebuttal to Complainant's prima facie case, the Panel concludes that that case controls as to this element of the Policy.
Therefore, the Panel finds that Complainant has proved that Respondent has no rights or legitimate interests in the disputed domain name.
Setting aside consideration of use in bad faith, the Policy requires that Complainant bear the burden of proving that the disputed domain was registered in bad faith. In the Panel's opinion, this is a particularly difficult hurdle for Complainant to clear because, as conceded by Complainant, it did not begin operation until 2003. The disputed domain name was registered by Respondent in 2000, some three years earlier. The Panel does not believe it is reasonable to conclude that Respondent could have specifically intended to usurp Complainant's rights in its service mark when that mark did not exist at the time of disputed domain name registration. Many prior UDRP panels have drawn similar conclusions when confronted by similar circumstances. See Noonan v. Sneed, FA 1343308 (Nat. Arb. Forum Oct. 22, 2010) ("Respondent registered the [disputed] domain name...over seven months prior to Complainant’s first use of [Complainant's] mark....Respondent’s registration of the mark cannot have been in bad faith."); see also Meeza QSTP-LLC v. Frank, D2009-0943 (WIPO Sept. 15, 2009) ("...when the Respondent registered the Domain Name, the Complainant had no trade mark rights. Indeed, the Complainant was not in existence and there is no suggestion in the evidence before the Panel that the Complainant was even in contemplation at that time. Accordingly, registration of the Domain Name cannot have been in bad faith within the meaning of paragraph 4(a)(iii) of the Policy even if any subsequent use of the Domain Name could be said to have been in bad faith.").
The Panel is not convinced by Respondent's presentation that all of its intentions are legitimate, but the burden does not fall upon Respondent to fully legitimize itself. The objectives of the Policy are limited -- designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting -- and not intended to thwart every sort of questionable business practice imaginable. Yes, Complainant has established to the Panel's satisfaction that over time Respondent has sought to sell the disputed domain name to Complainant for far above Respondent's out-of-pocket costs related to the name; but that is not per se illegitimate under the Policy if Respondent cannot be shown to have been aware of the Complainant when the name was registered.
As reasoned above, the Panel finds that Complainant has failed to prove that the disputed domain name was registered in bad faith.
Reverse Domain Name Hijacking
Respondent contends that Complainant has brought the Complaint in bad faith, suggesting that Complainant should be considered guilty of reverse domain name hijacking. As the Panel has found Complainant to have prevailed with respect to the first two elements in this case, the Panel chooses to dismiss any consideration of reverse domain name hijacking being applied to Complainant.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <iaft.com> domain name REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: October 9, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page