Gabrielle Boller Bruni v. Frick
Enterprises
Claim Number: FA0504000465282
PARTIES
Complainant
is Gabrielle Boller Bruni (“Complainant”),
represented by Dwayne K. Goetzel, 700 Lavaca, Suite 800, Austin, TX
78701. Respondent is Frick Enterprises (“Respondent”), 2100
Roswell Rd. #200C-908, Marietta, GA 30062.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <gabriellebruni.com>, registered with Network Solutions, Inc.
PANEL
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.
Hugues
G. Richard as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 22, 2005.
On
April 22, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <gabriellebruni.com> is registered with Network
Solutions, Inc. and that the Respondent is the current registrant of the
name. Network Solutions, Inc. has
verified that Respondent is bound by the Network Solutions, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
April 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 12,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@gabriellebruni.com by e-mail.
A
timely Response was received and determined to be complete on May 6, 2005.
A
timely Additional Submission filed by Complainant was received and determined
to be complete on May 12, 2005.
On May 12, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Hugues G. Richard as Panelist.
On May 17, 2005, Respondent’s Additional Submission was
received in a timely manner according to the Forum’s Supplemental Rule #7.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is an individual engaged in the creation and sales of high quality jewelry.
The
Complaint is based on the trademark GABRIELLE BRUNI CREATIONS (the trademark)
used in connection with Complainant’s jewelry and registered on November 19,
2002.
Complainant
owns substantial common law rights to the trademark which has been in use for
many years in connection with Complainant’s sales of jewelry.
Complainant
met Respondent in March 1999 when Respondent expressed an interest in marketing
and selling Complainant’s line of jewelry. The parties discussed sales
opportunities but no agreement was signed that would allow Respondent to claim
any trademark rights or interests or to register domain names incorporating the
trademark.
Respondent
is not one of Complainant’s authorized distributors or retailers of jewelry and
has no right to otherwise use the trademark.
Respondent has registered a domain name that is
identical or confusingly similar to the trademark.
Respondent registered the domain name which
Respondent knew was identical or confusingly similar to Complainant’s own name
and her trademark rights.
Respondent has no legitimate interests in the domain name and is not commonly known by it. Respondent does not have an
active web site that utilizes the domain name and such passive use is
preventing consumers from locating Complainant.
Respondent is not using the domain name in
association with a bona fide offering of goods or services.
Respondent has no trademark or intellectual property
rights in the domain name.
The activities of Respondent were made in bad faith.
Respondent registered the
domain name in order to trade on the
goodwill inherent in Complainant’s mark for Respondent’s own commercial gain,
to impede Complainant’s rights and duties and to hold onto such domain name in
hopes of selling it for a profit.
Respondent has disrupted Complainant’s business, and
diverted consumers from Complainant to a site accessible under the domain name
that could harm the goodwill represented by the mark, either for commercial
gain or with the intent to tarnish or disparage the mark by creating a
likelihood of confusion as to the source, sponsorship, affiliation, or
endorsement of the site.
As per the cease and desist letter of March 2003,
Complainant has requested the transfer of the domain name but Respondent has
refused.
B.
Respondent
Complainant
registered the trademark three (3) years after Respondent registered the domain
name, a time during which Complainant cooperated with Respondent’s use of the
domain name.
In
March 2000, the parties spent several days discussing Respondent’s strategy to
implement Respondent’s idea to combine the name “Gabrielle” with “Bruni,” as
shown in Respondent’s “Draft of Business Strategy,” Annex 1 of Response.
Complainant
agreed with Respondent’s strategy and with Respondent using the name “Gabrielle
Bruni Creations” as well as the domain name because Complainant supplied
Respondent, at Respondent’s request, promotional material such as postcards and
posters on which appeared the “Gabrielle Bruni Creations” name, and both the
name and the domain name were listed as objectives in the “Draft of Business
Strategy” presented to Complainant in March 2000. Therefore, Respondent’s use
of the domain name was known by Complainant since March 2000.
Respondent
spent several thousand dollars to exhibit the “Gabrielle Bruni Creations” name
to further the introduction of the jewelry line.
Consent
to use the “Gabrielle Bruni Creations” name was never denied to Respondent.
The
trademark could be considered an infringement on Respondent’s domain name and
could be looked upon as an attempt to capitalize on Respondent’s years of
effort in spreading the name.
The
web site utilizing the domain name is currently “under construction” and will
be active by mid-summer.
The
web site’s temporary non-use is not preventing consumers from locating
Complainant, and Respondent has not disrupted Complainant’s business since
Complainant has always done business as “Galliana Creations” and is known as
such. The only way consumers know of the name “Gabrielle Bruni Creations” is
from Respondent’s years of effort at spreading the name, and the trademark was
registered to capitalize on that effort.
Respondent
is not holding the domain name for the purpose of selling it for a profit.
Respondent registered the domain name in 1999 and Complainant cooperated and
assisted Respondent’s use of the name “Gabrielle Bruni Creations” for years
before claiming a right to the domain name even though Complainant never used
the name “Gabrielle Bruni Creations.”
Respondent
has legitimate interests in respect of the domain name. For six (6) years,
Respondent has sold exclusively under the name “Gabrielle Bruni Creations.” All
its business forms use the name “Gabrielle Bruni Creations” and refer to the
domain name, and Respondent is known as “Gabrielle Bruni Creations.”
C.
Complainant’s Additional Submission
Registration
is not the sole basis for Complainant’s trademark rights. Complainant has
common law rights in the trademark because personal names can support trademark
rights and Complainant has used her name nearly five (5) years before meeting
Respondent in March 1999. Moreover, Complainant’s name was used as an indicator
of source or origin of jewelry related goods and the trademark has been
registered, thereby conclusively establishing that it serves as an indication
of source or origin of Complainant’s goods and services.
In
addition, the name “Gabrielle Bruni” as well as the trademark have been, and
still are, used in connection with sales of jewelry.
Complainant
has been in the jewelry industry for over fifteen years and has become known on
the world stage.
The
proof submitted by Respondent indicates trademark rights owned by Complainant
since Respondent admits that the materials have been created by Complainant.
The
domain name is confusingly similar to the trademark since it is subsumed in its
entirety except for “.com,” which is not material.
Respondent
has no legitimate interest in the domain name. Respondent did not have anything
posted to the web site and although Respondent claims that the web site is
being re-tooled, Respondent has not provided proof of such and is thus trying
to create an appearance of a plan for the purposes of the instant proceeding.
In
March 1999, Respondent had requested permission to use Complainant’s name,
admitting that it is Complainant’s name and that she had rights and Complainant
then stated that she was in the process of registering one of her trademarks
that included her name. Therefore, Respondent should have known that Respondent
had no legitimate right to claim ownership in Complainant’s name or trademark
interests.
Respondent
registered the domain name in bad faith. Respondent owes $18,000 to Complainant
for jewelry ordered but not paid for. Respondent offered to “release” the
domain name to Complainant in exchange for a payment of $25,000. Respondent is
attempting to leverage the domain name against the monetary amounts he owes to
Complainant.
Respondent
did not refer to itself as “Gabrielle Bruni” but rather used Complainant’s name
to indicate that Respondent was offering Complainant’s jewelry for sale.
D.
Respondent’s Additional Submission
The
evidence shows that Complainant uses the GALLIANA CREATIONS mark and thus that
Complainant does not use her name.
At
the time the domain name was registered, it was not similar to any existing
business name.
The
web site has been active and running since 2000 and has only recently shut down
to be rebuilt with new items to offer. Respondent has been actively selling
GABRIELLE BRUNI CREATIONS jewelry.
It
has been five (5) years since Respondent registered the domain name and it is
only now that Complainant claims that she did not consent to Respondent’s use
of the trademark.
FINDINGS
After consideration of the foregoing, the
undersigned Panelist finds as follows:
·
The domain
name registered by Respondent is confusingly similar to the trademark in which
Complainant has rights.
·
Respondent
has no rights or legitimate interests in respect of the domain name.
·
The domain
name has been registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights; and
(2)
the
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.
To
satisfy this element, Complainant must prove that she has rights in the
trademark and that the domain name is identical or confusingly similar to the
trademark.
Complainant
asserts that she has established rights in the trademark GABRIELLE BRUNI
CREATIONS through registration of the trademark with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 2,652,045 issued November 19, 2002,
filed November 14, 2001 based on use in commerce since November 9, 1999). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
Although Respondent’s
November 1999 registration of the domain name predates Complainant’s
registration of the trademark, Complainant contends that it has established
common law rights in the trademark through continuous and longstanding use of
the trademark in commerce in connection with the sale of jewelry. See SeekAm.
Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant’s trademark or service mark be registered by a government authority
or agency for such rights to exist); see
also Tuxedos By Rose v. Nunez,
FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established); see also Keppel
TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of
long and substantial use of the said name [<keppelbank.com>] in
connection with its banking business, it has acquired rights under the common
law).
Complainant
further alleges common law rights in the trademark because it is Complainant’s
personal name which she started using in connection with her jewelry business
before meeting Respondent. The Policy extends to common law trademarks and
common law trademark rights exist in a person’s name. Complainant has been in the jewelry industry for over 15 years
and has since become known, which Respondent implicitly acknowledges when it
refers to Complainant in its promotional material as “a bright and rising star
in jewelry design on the world stage” (Annex 4 to the Response). Complainant
has established that she uses her name in the creation and the promotion of her
work and her name identifies her work. Thus, purchasers see Complainant’s name
as indicating the source of the jewelry in issue. See Winterson v. Hogarth, D2000-0235 (WIPO
May 22, 2000) (finding that ICANN Policy does not require that the complainant
have rights in a registered trademark and that it is sufficient to show common
law rights in holding that the complainant has common law rights to her name); see
also Sizemore v. DIS, Inc., FA 221173 (Nat. Arb. Forum Feb. 26, 2004)
(finding Complainant has established rights in the BILL SIZEMORE name through
its use in business and/or as a media entertainer via its radio program); see
also Barnes v. Old Barn Studios, Ltd., D2001-0121 (WIPO Mar. 26,
2001) (finding all that is required for a well-known person to establish a
common law trademark is likelihood of success in an action for passing off in
the event of use in trade without authority).
The
Panel finds that Respondent’s domain name is confusingly similar to the
trademark because it incorporates the trademark in its entirety and merely
deletes the term “creations” from the trademark. Such omission is insufficient to overcome a finding of confusing
similarity pursuant to Paragraph 4(a)(i) of the Policy. See Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO
Nov. 6, 2000) (finding that the domain name, <hammondsuddards.net>, is
essentially identical to the complainant’s mark, HAMMOND SUDDARDS EDGE, where
the name “Hammond Suddards” identifies the complainant independently of the
word “edge”); see also Wellness
Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16,
2001) (finding that the domain name <wellness-international.com> is
confusingly similar to the complainant’s “Wellness International Network”).
Moreover,
the Panel finds that addition of the generic top-level domain “.com” is not
enough to overcome the confusing similarity between Respondent’s domain name
and the trademark pursuant to Paragraph 4(a)(i) of the Policy. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is .
. . without legal significance since use of a gTLD is required of domain name
registrants.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”).
The Panel is
satisfied that Complainant has, for the purposes of Policy ¶ 4(a)(i), established trademark rights in
the trademark GABRIELLE
BRUNI CREATIONS
and that the domain name in issue is confusingly similar to that trademark.
Therefore, the Complainant meets the requirements of Policy ¶ 4(a)(i).
For convenience
purposes, the Panel will deal with the third element at this point, as it
influences findings relative to second element.
Paragraph 4(b) of the Policy states that
the following circumstances, in particular but without limitation, if
found by the Panel to be present, shall be evidence of the registration and use
of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have
acquired the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of your documented
out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner
of the trademark or service mark from reflecting the mark in a corresponding
domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to
attract, for commercial gain, Internet users to your web site or other on-line
location, by creating a likelihood of confusion with the complainant's mark as
to the source, sponsorship, affiliation, or endorsement of your web site or
location or of a product or service on your web site or location.
The Panel finds
that Respondent registered the <gabriellebruni.com> domain name
with actual knowledge of Complainant’s rights in the GABRIELLE BRUNI CREATIONS
mark due to the fact that Respondent met with Complainant in 1999 to discuss a
possible distributorship agreement. Thus,
the Panel concludes that registration of a domain name confusingly similar to
another’s mark despite actual or constructive knowledge of the mark holder’s
rights is tantamount to bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”).
Furthermore, according to Policy ¶ 4(b)(i),
Respondent exhibits bad faith if circumstances indicate that it has registered
the disputed domain name primarily for the purpose of selling or renting. Respondent attempted to sell the domain name
to Complainant for consideration that was in excess of its out-of-pocket
expenses, and therefore exhibited bad faith. See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd.,
FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent
offered domain names for sale); see also Universal City Studios, Inc.
v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith
where Respondent made no use of the domain names except to offer them to sale
to Complainant); see also Dynojet Research, Inc. v. Norman,
AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad
faith when he requested monetary compensation beyond out of pocket costs in
exchange for the registered domain name); see also Sonic-Crest Cadillac, LLC v. Hayes, FA 212652 (Nat. Arb. Forum Jan. 14, 2004)
(“[T]he Panel notes that Respondent attempted
to sell two of the domain name registrations . . . under circumstances where it
was evident that Respondent was hoping to sell the domain name registrations to
Complainant, for a price in excess of any costs Respondent could have incurred
in the registration of the domain names. [T]his is evidence that these two
domain names were both used and registered in bad faith.”).
Accordingly, the
Panel finds that the third element has been satisfied.
Paragraph 4(c) of the Policy states that
any of the following circumstances, in particular but without limitation, if
found by the Panel to be proved based on its evaluation of all evidence
presented, shall demonstrate Respondent’s rights or legitimate interests in the
domain name:
(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) has 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.
Paragraph 4(c)
of the Policy helpfully provides some guidance as to some factors, which, if
present, may serve to demonstrate a legitimate interest in a domain name.
Conversely, the absence of such factors may therefore be indicative of a lack
of such an interest.
It appears from
the evidence in this case that Complainant has not expressly authorized
Respondent’s use of the trademark for the purpose of registering the disputed
domain name: no written agreement of any kind has been produced. Respondent
states that Complainant consented to its use of the trademark and its
registration of the domain name because Complainant provided it with
promotional material showing the trademark and has never opposed Respondent’s
use of the trademark until the present proceedings. However, the Panel finds
that the evidence presented is insufficient to demonstrate Complainant’s
acquiescence. The Panel accepts Complainant’s position
that Respondent has neither been licensed nor otherwise permitted to use the
trademark nor any domain name confusingly similar to the trademark.
Respondent
appears to be claiming that it is an authorized seller of Complainant’s
products. Hence, Respondent’s description of itself as an authorized
seller is based solely on Complainant’s actions in providing promotional
material bearing the trademark in issue as well as Complainant’s silence since
the registration of the domain name in 1999. Based on the facts of this case,
the Panel can find no mandate from Complainant to Respondent to open a website
using the trademark. Nevertheless,
even if Respondent was an authorized seller, this would not be enough to give
him rights to the trademark in issue or to register the disputed domain name. See
The Stanley Works & Stanley Logistics, Inc. v. Camp Creek Co., Inc.,
D2000-0113 (WIPO Apr. 14, 2000) (“Moreover, even if Respondent is a retail
seller of Complainant’s products, the collateral trademark use necessary to
allow resell of Complainant’s products is not enough to give Respondent
proprietary rights in Complainant’s trademarks, and certainly not enough to
confer the right to use these trademarks as domain names. Many
famous trademarks designate goods that are manufactured and sold through
numerous retail stores. But this, without something more such as authorization
in a licensing agreement or other special circumstances, does not give the
retail sellers rights of domain name magnitude over the manufacturer’s
trademarks. This Panel
finds Respondent does not have sufficient rights or interests in the trademarks
to allow Respondent to register them as domain names.”).
Respondent claims that it uses the
“Gabrielle Bruni Creations” name on all its business forms and that all its
forms refer to the domain name. It appears from the evidence that
Respondent has been using the domain name in connection with an offering of
goods or services, which dates back prior to the beginning of the present
proceeding. However, the question here is whether there is a bona fide offering
of goods. For a use to be considered bona fide, the use must be one in good
faith under Policy ¶ 4(a)(iii).
See First Am. Funds, Inc. v. Ult.Search, Inc, D2000-1840 (WIPO May 1,
2001) (“Although the Policy draws a clear distinction between the requirement
of showing absence of legitimate right or interest in para. 4(a)(ii) and the
showing of bad faith registration and use in para. 4(a)(iii), in reality it is
difficult to separate the consideration of the one from the other. Absence of
any right or interest on the part of Respondent may be of assistance in
determining bad faith registration and use, and bad faith registration and use
may be of assistance in determining the legitimacy of the claimed right or
interest.”); see also Pfizer
Inc. v. Websites,
D2004-0730 (WIPO Oct. 17, 2004) (“In determining whether an offering of
goods or services is bona fide under Paragraph 4(c)(i), the dispositive
question is whether the use of the disputed domain name in connection with the
offering otherwise constitutes bad faith registration or use of the domain name
under Paragraph 4(a)(iii).”).
In the same
manner, it appears that Respondent is known by the domain name. However, this
element cannot succeed if there is a mala fide intent, as it would
otherwise be an open door to anyone who registers a domain name in bad faith
but becomes known by it due to its use in business. See
Palm, Inc. v. S. China House of Tech.
Consultants Ltd., D2000-1492 (WIPO Dec. 19, 2000) (“As
to (i) it is clear that the Respondent has been using the Domain Name in
connection with an offering of goods or services, which dates back prior to the
launch of this Complaint and indeed prior to the Court action referred to
above. It seems to the Panel that the issue for the Panel is whether the
offering of goods or services can be said to have been bona fide. And to a
certain extent that depends upon what the Respondent’s motives were at the time
when the Domain Name was registered. As to (ii), while the Respondent’s full name is South China House of
Technology Consultants Limited, it is plain that on the website it uses PALMAX
as a trading name. While the words "bona fide" do not feature in this
sub-paragraph, the Panel takes the view that they should be read into it and
that a Respondent known by a name corresponding to the Domain Name should not
be able to take advantage of this sub-paragraph if the name was adopted with mala
fide intent.”).
Having found
that the domain name has been registered and is being used in bad faith, the
Panel finds that the second element has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gabriellebruni.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: May 27, 2005
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