Euroleather Inc. v Albert Liska
Claim Number: FA1412001595024
Complainant is Euroleather Inc. (“Complainant”), represented by Stephen J. Strauss of FULWIDER PATTON LLP, California, USA. Respondent is Albert Liska (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <euro-leatherinc.com>, registered with Melbourne IT Ltd.
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 December 12, 2014; the National Arbitration Forum received payment on December 12, 2014.
On December 16, 2014, Melbourne IT Ltd confirmed by e-mail to the National Arbitration Forum that the <euro-leatherinc.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 December 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2015 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@euro-leatherinc.com. Also on December 18, 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 December 29, 2014.
On January 5, 2015, Complainant filed an Additional Submission, which complied with Supplemental Rule 7. On the same day, Respondent responded with an Additional Submission, which also complied with Supplemental Rule 7. The Panel will consider both Additional Submissions in rendering its decision below.
On January 5, 2015, 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
Since 1995, Complaint has crafted quality leather for use in aircraft and such consumer goods as automobiles, furniture and handbags that are sold throughout the United States of America. Upon its inception, Complainant marketed its products under the EUROLEATHER trade name and mark. Through such operations, Complainant established common law trademark rights in that mark.
Complainant obtained a registration with the United States Patent and Trademark Office ("USPTO") for its EUROLEATHER trademark. Complainant also markets its goods through its domain name <euroleather.net>.
The disputed domain name, <euro-leatherinc.com>, incorporates entirely Complainant's EUROLEATHER mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent used the name until recently to promote the sale and distribution of Complainant's products; Respondent is utilizing the trade name and mark, EURO LEATHER. After receiving complaints from consumers and Complainant, Respondent altered its business name to EUREKA LEATHER, and redirected the disputed domain name to Respondent's other domain name, <eurekaleather.com>, and the website located there.
There is no relationship between Complainant and Respondent that allows Respondent permission or authorization to use Complainant's trademark. Moreover, there is no evidence that Respondent has been commonly known as the disputed domain name. Respondent's use of the disputed domain name to lure internet users to purchase goods in direct competition with Complainant is not a bona fide offering of goods or services.
The disputed domain name was registered and is being used in bad faith. Prior to registration of the name, Respondent had actual knowledge of Complainant's rights in its trademark. Moreover, Respondent used the disputed domain name to attract internet users, who were seeking information about Complainant, to Respondent's website and its offerings.
B. Respondent
Respondent acted as a subagent for "Euro Leather, Inc.," a company affiliated with an Italian company and incorporated legitimately in California. After said company's formation in California, Respondent registered the disputed domain name, <euro-leatherinc.com>, in connection with that company because <euroleather.com> was already registered by a European entity.
Respondent has used the disputed domain name for ten years to conduct legitimate business in leather goods supply. Respondent now uses the name to redirect internet users to a new website that features his company's new name, "Eureka Leather." Respondent is now a part-owner of said company.
It was not until 2009, when engaging in the supply of leather to furniture manufacturers, that Respondent became aware of Complainant, which is based in North Carolina. Respondent never had any malicious intent or ill-will towards Complainant.
If it wishes, Complainant may purchase the disputed domain name from Respondent.
C. Complainant's Additional Submission
Respondent admits to having conducted a domain name search prior to registration of the disputed domain name. In doing so, Respondent must have become aware of Complainant's domain name, <euroleather.net>, and thus Complainant's website and business operations.
After initiation of these proceedings, Respondent modified the website connected with the disputed domain name to become a blank page containing the wording "[t]his site is under construction." Such passive holding is evidence of bad faith.
Language in the Response, suggesting that Respondent is willing to sell the disputed domain name to Complainant, is further evidence of Respondent's bad faith in registering and using the name.
D. Respondent's Additional Submission
Complainant registered its trademark seven years after Respondent registered the disputed domain name.
The disputed domain name is similar but not identical to Complainant's mark.
Respondent has rights in the disputed domain name because he registered the name ten years ago on behalf on a company duly and lawfully incorporated in California under the name "Euro Leather, Inc." Complainant had no right to license its mark in California, only in North Carolina.
Respondent researched only ".com" domain names, not ".net," ".biz" or ".org" names.
Complainant wants transfer of the disputed domain name in order to access Respondent's customer base.
Complainant is a company based in the state of North Carolina in the United States of America which crafts and sells leather goods to other businesses for inclusion into their products, such as aircraft, automobiles, furniture and handbags. Complainant has been in business since 1995 and has obtained a registration with the USPTO for its EUROLEATHER trademark (e.g., Registration No. 4,024,497; registered on Sept. 13, 2011).
Respondent registered the disputed domain name, <euro-leatherinc.com>, on October 8, 2004. Respondent had been a subagent for a United States company, located and incorporated in the state of California, which imports leather products from Italy and sells them to companies within the United States. The disputed domain name directs internet users to Respondent's website, which now lists said company (formerly known as "Euro Leather, Inc.") as "Eureka Leather, Inc."
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.
Based on Complainant's submission to the Panel of appropriate evidence (Complainant Annex 2) that Complainant has a valid USPTO registration for the EUROLEATHER trademark, the Panel concludes that Complainant has the requisite rights in that mark for the purposes of Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) ("Complainant established rights in the PAISLEY PARK mark by registering it with the United States Patent and Trademark Office ('USPTO')."); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The disputed domain name, <euro-leatherinc.com>, contains Complainant's EUROLEATHER mark in its entirety, along with a hyphen and the suffixes, "inc" and ".com." In the Panel's view, those additions may prevent a finding that the disputed domain name is identical to Complainant's mark, but do not preclude a finding that the name is confusingly similar to the mark. The suffix "inc" is particularly confusing as Complainant's business name, "Euroleather, Inc." includes that same suffix. Consequently, the Panel determines that the disputed domain name is confusingly similar to the Complainant's trademark. See Fort Knox Nat'l Co. v. Ekaterina Phillipova, D2004-0281 (WIPO June 15, 2004) (finding <true-pay.com> to be confusingly similar to the TRUEPAY mark); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) ("The addition in the domain names of...the generic term 'INC,' does not change the confusing similarity.").
As a result, the Panel finds that Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
The Panel finds that Complainant has sustained a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, as Complainant has established rights in a confusingly similar trademark and has asserted, without contradiction from Respondent, that it has never granted Respondent permission or authority to use that mark. Therefore, it is incumbent upon Respondent to come forward with evidence to rebut that prima facie case. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) ("Complainant has presented a prima facie case against Respondent and as a result shifts the burden to Respondent to establish that it does have rights and legitimate interests in the disputed domain name.").
Policy ¶ 4(c) offers three specific ways in which Respondent might substantiate its rights or legitimate interests in the disputed domain name, as follows:
(i) 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
(ii) 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
(iii) 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.
In this case, Respondent has not explicitly cited Policy ¶ 4(c)(ii) on his behalf, but he has indicated, with supporting evidence (Respondent Annexes), that the original name of the company for which he was a subagent and, by his assertion, is now part-owner, was "Euro Leather, Inc." The Panel can observe, on its own, that such a name would lend considerable support to the contention that that company would be commonly known as the disputed domain name, <euro-leatherinc.com>, as the two names are similar in appearance and pronunciation. Thus, the Panel concludes that Policy ¶ 4(c)(ii) does apply in this instance. See Hard Rock Cafe Int'l, Inc. v. Leong, FA 1519472 (Nat. Arb. Forum Oct. 25, 2013) ("Panels have been especially prepared to assume that a respondent is ‘commonly known’ by a name where the evidence indicates that the name has been used in a business context."); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) ("The Panel also notes that the Respondent’s business name is Anytime OnLine Traffic School and that it is therefore not far-fetched to use <aoltrafficschool.com> as a domain name for Respondent’s business.").
Moreover, Respondent has offered reasonable assertions that said company has legitimately sold leather goods in connection with the disputed domain name for approximately ten years. In the Panel's view, this would bring into play Policy ¶ 4(c)(i) in Respondent's favor as well. Therefore, the Panel believes that Respondent has successfully rebutted Complainant's prima facie case on at least two grounds, and so prevails as to Policy ¶ 4(a)(ii).
In line with the foregoing analysis, the Panel finds that Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
For completion's sake, if there is any chance that the Panel's analysis regarding the preceding element of the Policy is faulty, the Panel also concludes that Complainant is hard pressed to sustain its burden as to the third element required by the Policy. Clearly, Complainant obtained it's USPTO registration for its EUROLEATHER mark in 2011, nearly seven years after Respondent registered the disputed domain name. This might not have fatally flawed Complainant's filing if Complainant had brought forth evidence to support its claim that it had established common law rights in that trademark prior to registration of the disputed domain name. Complainant could have done so through submission of evidence to the Panel relating to volume of sales, advertising efforts, media recognition and/or other indicia of trademark notoriety or fame. See Alpine Entm't Group, Inc. v. Alvarez, D2006-1392 (WIPO Jan. 22, 2007) ("Evidence of [common law rights] might include the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys, and media recognition trademark."); see also Amsec Enterprises, L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001).
However, in neither its Amended Complaint nor its Additional Submission has Complainant tendered any evidence along those lines. As a result, the Panel cannot give credence to Complainant's mere assertion that it had established common law rights in its mark prior to 2004, when the disputed domain name was registered. Therefore, as Complainant and Respondent reside in widely separate regions of the United States (i.e., North Carolina versus California), the Panel is disinclined to believe that Respondent was necessarily aware of Complainant's business or mark before the disputed domain registration and that that registration was made in bad faith. See Meeza QSTP-LLC v. Frank, D2009-0943 (WIPO Sept. 15, 2009) ("...for a domain name to have been registered in bad faith, the respondent must have had the complainant in mind at time of registration (or acquisition) of the domain name."); see also Solaris Pharmaceuticals Inc. v. Edward S, FA 791029 (Nat. Arb. Forum Nov. 6, 2006) ("The Panel believes Respondent’s assertion, and finds that Respondent’s registration and use of the <medisave.com> predates any rights Complainant has in the MEDISAVE mark and therefore, Respondent did not register and use the disputed domain name in bad faith under Policy ¶ 4(a)[iii]").
In reaching this conclusion, the Panel discounts Complainant's contention that Respondent researched all potentially relevant domain names before selecting the disputed domain name and therefore must have been aware of Complainant's <euroleather.net> domain name prior to registration of the disputed domain name. Complainant cites the Response to support its contention. However, in its reading of the Response, the Panel understands that Respondent asserts that he was aware that <euroleather.com> was taken prior to registration of the disputed domain name, but it does not necessarily assert that such knowledge was acquired as the result of an exhaustive online search. Moreover, in its Additional Submission, Respondent asserts that its domain name inquiry was restricted to names bearing only the ".com" suffix ― the most common generic top-level domain.
For these reasons, the Panel finds that Complainant has not proven that Respondent registered and is using the disputed domain name in bad faith.
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 <euro-leatherinc.com> domain name REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: January 19, 2015
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