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Seth Aurbach v. Kevin Saronski [2003] GENDND 545 (29 May 2003)


National Arbitration Forum

DECISION

Seth Aurbach v. Kevin Saronski

Claim Number:  FA0304000155133

PARTIES

Complainant is Seth Aurbach, Hollywood, CA, USA (“Complainant”) represented by David L. Amkraut, of Law Offices of David L. Amkraut. Respondent is Kevin Saronski, Kitchener, ON, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nlphoto.com>, registered with Enom, 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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 18, 2003; the Forum received a hard copy of the Complaint on April 21, 2003.

On April 22, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <nlphoto.com> 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-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On April 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 13, 2003 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@nlphoto.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 20, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <nlphoto.com> domain name is confusingly similar to Complainant’s N&L PHOTO mark.

2. Respondent does not have any rights or legitimate interests in the <nlphoto.com> domain name.

3. Respondent registered and used the <nlphoto.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Seth Aurbach, has used the NLPHOTO, NLPHOTO.COM, N&L PHOTOGRAPHY and N&L PHOTO marks in commerce by way of his website, located at <nlphoto.com>, since 1996. The above marks are used in connection with the marketing and sale of Complainant’s erotic photography (in various formats and media, e.g., DVDs, CDs and prints).

Complainant’s N AND L PHOTOGRAPHY entity was registered in the State of New York in November 1995. Complainant has invested significant resources in developing and promoting the N&L PHOTO mark, “eventually attracting steady traffic.”

Respondent, Kevin Saronski, registered the <nlphoto.com> domain name on February 16, 1996.* Complainant’s investigation of Respondent indicates that the subject domain name resolves to Respondent’s commercial website, which offers goods in competition with Complainant’s offerings. 

Respondent obtained control of the <nlphoto.com> domain name by acquiring Complainant’s user name and password, and subsequently changed the domain name registration and redirected <nlphoto.com> to his own website.

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the N&L PHOTO mark by conducting business and offering goods under said mark since 1995. Although Complainant does not hold a trademark registration and there is little evidence that Complainant has acquired secondary source identification through its use of the N&L PHOTO mark, without a Response, Complainant’s assertions will be presumed accurate unless clearly contradicted by the evidence. See 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”); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy).

Respondent’s <nlphoto.com> domain name is confusingly similar to Complainant’s N&L PHOTO mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, but for the absence of the ampersand. Slight grammatical alterations fail to create a domain name distinguishable from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant’s submission to the Panel asserts that Respondent does not have any rights or legitimate interests in the <nlphoto.com> domain name. Because Respondent has failed to submit a Response, Complainant’s assertions are unopposed and the Panel accepts all reasonable inferences contained in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Additionally, because Complainant has provided proof of valid, subsisting rights in a mark that is confusingly similar to the domain name in question and alleged that Respondent lacks rights in the domain name, the burden shifts to Respondent. By failing to respond, Respondent has failed to assert any circumstances that could demonstrate rights or interests in the subject domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Uncontested circumstances indicate that Complainant was the previous registrant of the <nlphoto.com> domain name, and that Respondent recently acquired the information necessary to alter the registration information. Such evidence is relevant in determining Respondent’s rights in the domain name, or lack thereof.  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interests in the domain name).

Respondent uses the <nlphoto.com> domain name to redirect Internet users to a commercial website. Respondent makes unauthorized use of Complainant’s mark in its domain name to attract Complainant’s customers, which has the affect of diluting the goodwill associated with Complainants N&L PHOTO mark. Respondent’s opportunistic use of Complainant’s domain name to offer products in competition with Complainant’s goods fails to establish rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).

Respondent’s WHOIS information indicates that it is Kevin Saronski, and no information before the Panel suggests that Respondent is commonly known by the <nlphoto.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant’s unrefuted evidence reveals that the subject domain name is well-known among the relevant consuming public as identifying Complainant, and its related goods and offerings. As stated, Respondent acquired the domain name registration without authorization, and does not have a license from Complainant to make use of the N&L PHOTO mark. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The bad faith circumstances enunciated under Policy paragraph 4(b) are not exhaustive, and the Policy recognizes that other circumstances can be evidence that a domain name was registered and used in bad faith. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶ 4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).

As stated, Respondent acquired the domain name registration without authorization from Complainant, and subsequently uses <nlphoto.com> to ensnare unsuspecting Internet users and Complainant’s customers. Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary).

Additionally, circumstances reveal that Respondent had knowledge of Complainant’s rights in the N&L PHOTO mark and corresponding <nlphoto.com> domain name. Respondent’s registration and use of a domain name, despite knowledge of its infringing nature, constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (inferring that Respondent had knowledge that the <tercent.com> domain name previously belonged to Complainant); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <nlphoto.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  May 29, 2003


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