Avi Wazana and Wazana Brothers International Inc. v. Shad Applegate
Claim Number: FA0606000729877
Complainant is Avi Wazana and Wazana Brothers International Inc. (“Complainant”), represented by Nitin Dhopade, 8201 Woodley Avenue, Van Nuys, CA 91406. Respondent is Shad Applegate (“Respondent”), 612 Meyer Lane #10, Redondo Beach, CA 90278.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aviwazana.com>, registered with Go Daddy Software, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 12, 2006.
On June 13, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <aviwazana.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 June 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 10, 2006 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@aviwazana.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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." 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 makes the following assertions:
1. Respondent’s <aviwazana.com> domain name is identical to Complainant’s AVI WAZANA mark.
2. Respondent does not have any rights or legitimate interests in the <aviwazana.com> domain name.
3. Respondent registered and used the <aviwazana.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Avi Wazana, is fifty-percent owner in and CEO of Wazana Brothers International, Inc., d/b/a Micro Solutions Enterprise. Micro Solutions Enterprise remanufactures imaging supplies, including toner and inkjet cartridges. Complainant has been presented with many industry awards, and has been known exclusively by Avi Wazana, which is his given name. Complainant has been associated with the imaging industry since 1994. Complainant holds no trademark registration for the AVI WAZANA mark, but has used the mark continuously both personally and professionally.
Respondent registered the <aviwazana.com> domain name on July 11, 2004. The disputed domain name resolves to the <imagingindustry.com> website, which is not affiliated with Complainant in any way.
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."
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.”).
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.
The Panel finds that Complainant is not required to own a trademark registration in order to establish rights in the AVI WAZANA mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica 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 Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant has established common law rights in the AVI
WAZANA mark pursuant to Policy ¶ 4(a)(i) because the Complainant has used the
name in direct connection with the Wazana Brothers International, Inc. d/b/a Micro
Solutions Enterprises business.
Complainant is CEO and fifty-percent stockholder in the company, and has
used his name in the industry since 1994.
The Panel finds that his name has acquired sufficient secondary meaning
in relation to his occupation. In Winterson v. Hogarth, D2000-0235 (WIPO
May 22, 2000), the panel found that ICANN Policy did not require that the
complainant have rights in a registered trademark and that it was sufficient to
show common law rights in holding that the complainant has common law rights to
her name.
See McCarthy on Trademarks and Unfair Competition,
§ 13:2 (4th ed. 2002) (“Secondary meaning grows out
of long association of the name with the business, and thereby becomes the name
of the business as such; is acquired when the name and the business become
synonymous in the public mind; and submerges the primary meaning of the name as
a word identifying a person, in favor of its meaning as a word identifying that
business.”). The Panel thus finds that
Complainant has common law rights in the AVI WAZANA mark pursuant to Policy ¶
4(a)(i).
Respondent’s <aviwazana.com> domain name is identical to Complainant’s AVI WAZANA mark because the disputed domain name contains the entire mark and merely adds a generic top-level domain name (“gTLD”). The mere addition of a gTLD to Complainant’s mark does not sufficiently distinguish the domain name from the mark under Policy ¶ 4(a)(i). 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 (gTLD) “.com” after the name POMELLATO is not relevant); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to the complainant’s BODY BY VICTORIA mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <aviwazana.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <aviwazana.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use
Complainant’s AVI WAZANA mark, and that Respondent is not associated with
Complainant in any way. Furthermore,
Respondent’s WHOIS information does not suggest that Respondent is commonly
known by the disputed domain name, and there is no evidence in the record to
suggest that Respondent is or has ever been known by the disputed domain name
under Policy ¶ 4(c)(ii). Thus, Respondent
has not established rights or legitimate interests in the <aviwazana.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any
derivation.”).
Moreover, Respondent is using the <aviwazana.com>
domain name to divert Internet users to a website that is not affiliated with
Complainant in any way, presumably for Respondent’s commercial benefit. Such use of the disputed domain name does
not constitute a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See
eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the
respondent’s use of the complainant’s entire mark in domain names makes it
difficult to infer a legitimate use); see also Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to
divert Internet users seeking Complainant's website to a website of Respondent
and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent is using the <aviwazana.com> domain
name to divert Internet users to a third-party website that is not affiliated
with Complainant. The Panel infers that
Respondent is doing so for Respondent’s commercial benefit, and the Panel finds
that such use constitutes bad faith registration and use by the Respondent
pursuant to Policy ¶ 4(b)(iv). The
Panel further finds that Respondent’s disputed domain name also creates a
likelihood of confusion as to Complainant’s affiliation with the <aviwazana.com>
domain name. See Bank of Am.
Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003)
(stating that “[s]ince the disputed domain names contain entire versions of
Complainant’s marks and are used for something completely unrelated to their
descriptive quality, a consumer searching for Complainant would become confused
as to Complainant’s affiliation with the resulting search engine website” in
holding that the domain names were registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also H-D Michigan, Inc. v. Petersons Auto., FA
135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aviwazana.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 27, 2006
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