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Naomi Sadoun d/b/a Indigo Dye House, Inc. v. Dotan Shoham a/k/a Indigo Dyehouse [2004] GENDND 118 (6 January 2004)


National Arbitration Forum

DECISION

Naomi Sadoun d/b/a Indigo Dye House, Inc. v. Dotan Shoham a/k/a Indigo Dyehouse

Claim Number: FA0310000206314

PARTIES

Complainant is Naomi Sadoun d/b/a Indigo Dye House, Inc., North Hollywood, CA (“Complainant”) represented by Jennifer Dale, 7418 Fulton Avenue, North Hollywood, CA 91605.  Respondent is Dotan Shoham a/k/a Indigo Dyehouse, Los Angeles, CA (“Respondent”), represented by Michael Doland of Law Offices of Michael Doland, Inc., 12100 Wilshire Blvd., Suite 730, Los Angeles, CA 90025.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <indigodyehouse.com>, registered with Register.Com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically October 28, 2003; the Forum received a hard copy of the Complaint November 7, 2003.

On October 29, 2003, Register.Com confirmed by e-mail to the Forum that the domain name <indigodyehouse.com> is registered with Register.Com and that Respondent is the current registrant of the name.  Register.Com verified that Respondent is bound by the Register.Com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On November 20, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 10, 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@indigodyehouse.com by e-mail.

The Forum received a Response, timely filed, and determined to be complete December 10, 2003.

The Panel received no Additional Submissions.

On December 23, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

1. Respondent registered a domain name that is confusingly similar to a business operated by Complainant.

2. Respondent has no rights in the domain name containing Complainant’s business name.

3. Respondent’s conduct constitutes bad faith in registration and use of a domain name.

B. Respondent made the following points in response:

1. Respondent has the right to register a domain name containing the words indigo and dye.

2. Respondent had rights in the domain name before Complainant acquired any rights in the words.

3. Respondent concedes an intent to passively hold the domain name, conduct that provides the basis for finding bad faith.

Preliminary Procedural Matters

In accordance with Policy ¶ 5(b)(viii), Respondent failed to provide a signature that certifies that the information provided in the Response is complete or accurate.  Where a party fails to comply with this requirement, the Panel may find that the deficiency renders the Response inadmissible.  See Schott Glas v. Necschott, D2001-0127 (WIPO Mar. 14, 2001) (choosing not to consider the Response in light of formal deficiencies); see also Talk City Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (concluding that no weight would be afforded to the facts alleged in Respondent’s deficient submission, partly because it “did not contain any certification that the information contained in the e-mail was, ‘to the best of Respondent’s knowledge complete and accurate’”  in accordance with Rule 5(b)(viii)); but compare Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“Ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process").

Although the Panel cites to the Response, the Panel gave the deficient Response no weight and the Response did not determine the outcome.

FINDINGS

The Panel finds, for the reasons set out below, that this Complaint should be dismissed without prejudice to re-filing.  Complainant failed to meet the required threshold burden of showing rights in a mark that was used by Respondent in a confusingly similar domain name. Since Complainant may be able to cure these shortcomings if proof exists to support its allegations, the Complaint is dismissed without prejudice to Complainant’s re-filing it in a new action.

 

Complainant identifies itself as Naomi Sadoun d/b/a Indigo Dye House, Inc. Complainant and Respondent conceded they had a prior business relationship but disagree as to its nature.  The parties have an apparent dispute over ownership of Indigo Dye House, Inc., a business that Respondent maintains it had an ownership interest in but as to which neither party presented extrinsic proof to support their allegations. Complainant maintains that Respondent was an employee but offered no proof to support any of its allegations.

Respondent registered the disputed domain name September 6, 2001, before Complainant acquired any website, email, trademark or service mark, if any ever were acquired.  Complainant maintains this acquisition was purchased with a company credit card for the company but the proof Complainant offered shows a payment one year later on September 3, 2002.  Respondent concedes that it allowed Complainant to pay the renewal fee for the email account and that Respondent apparently considered it transferred.

Respondent’s employment terminated, apparently voluntarily, August 8, 2003.

Complainant arranged a transfer of the domain name to its name from Register.com; but, thereafter, Respondent arranged a second transfer back to itself.

Complainant notified Register.com by letter dated August 20, 2003, that “Mr. Dotan Shoham is a disgruntled employee” and that the company, Indigo Dye House, Inc.  had been unable to retrieve its email since August 18th. 

Registration dated September 6, 2001, was made on behalf of Indigo “Dyehouse” with Indigo “Dyehouse” and Dotan Shoham as Adminstrative Contact.

A statement from American Express for Naomi Sadoun, Indigo Dye House, Inc., contained a billing for September 3, 2002, identified to be for “REGISTER.COM WEBSITE 800-899-9723 DOMAIN REGIS” in the amount of $38.95.

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 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;

(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 to and/or Confusingly Similar

Complainant asserts that Respondent, a former employee of Complainant, stole the disputed domain name that rightfully belonged to Complainant’s business, INDIGO DYE HOUSE, INC. 

Respondent urges that Complainant has not claimed, nor provided any evidence, of rights in any trademark or service mark for Indigo Dye House, Inc., and that Complainant has not satisfied Policy ¶ 4(a)(i). See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that simply operating under a business name does not, per se, constitute secondary source identification sufficient to warrant a finding of common law rights in a mark); see also Diversified Mortgage, Inc. v. World Fin. Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that its “rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks”); see also CyberImprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that, although Respondent’s domain name <cyberimprints.com> was identical to Complainant’s incorporated business name, Complainant did not claim to hold any trademark or service mark rights in CYBERIMPRINTS or CYBERIMPRINTS.COM, and therefore, its request for transfer was denied); see also TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (finding that in order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s initial burden is to provide proof of “valid, subsisting rights in a mark that is similar or identical to the domain name in question”).

Complainant did not produce extrinsic proof to establish its business entity as either a d/b/a or a corporation.  Respondent challenged Complainant’s right to do business under an assumed name filing using the incorporated designation. Yet, Respondent concedes that Complainant has done business under the name but claims to have ownership rights. Respondent concedes that it registered the domain name as a representative of the business.

The Panel finds that Complainant did not satisfy ICANN Policy ¶ 4(a)(i) that required it to show that the domain name registered by Respondent is identical to or confusingly similar to an entity in which Complainant has rights. 

Rights to or Legitimate Interests

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name because the registration of the domain name was purchased by Complainant’s business.  Further, at the time Respondent registered the name, Respondent was acting in the scope of its employment for Complainant.  Thus, Complainant urges that Respondent cannot have rights or legitimate interests in a name registration that Respondent never owned.  See Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that as a former employee, Respondent knew or should have known about the legitimate interests and rights of Complainant and, by contrast, its own lack of interest or right in the domain name).

Additionally, Complainant asserts that Respondent is using the domain name to divert consumers and tarnish Complainant’s business, making any legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) unfeasible.  See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (finding evidence Respondent had no rights or legitimate interests in the disputed domain name because it used the name to tarnish and dilute Complainant’s mark); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to sites that mislead consumers and tarnish Complainant’s mark).

On the face of these documents it would appear that Respondent lacks rights and legitimate interests in the domain name because Respondent concedes that it assumed possession of Complainant’s domain name registration without Complainant’s authorization.  Thereafter, Respondent gained access and control over Complainant’s account with the registrar of the disputed domain name.  See Mgt. Plus Enters. Inc. v. MPE Tech. Servs., FA 192746 (Nat. Arb. Forum Oct. 27, 2003) (“Respondent’s use of fraud to first gain access to Complainant’s account with [the registrar] and then to transfer the domain name registration to itself is prima facie evidence that Respondent lacks rights or legitimate interests in the disputed domain name”). Further, Respondent may have engaged in fraudulent conduct to accomplish this feat.

Respondent does not address its improper conduct in its deficient Response.  Respondent, instead, contradicts the allegations in Complainant’s Complaint.  Although the Panel determined to give no weight to Respondent’s Response, this does not relieve Complainant of the burden of supporting its allegations with some proof.  For example, Complainant alleged that probable confusion exists between the domain name and its company; but it implicitly concedes that no current confusion exists in the marketplace regarding the domain name and its business, as Respondent pointed out.  Complainant stated in the Complaint that ownership of the domain name “could become very confusing to our customers [emphasis added],” and Respondent seized upon this language as proof that no such confusion presently exists.  Furthermore, Respondent noted that confusion is even less likely because the name is used only for e-mail purposes and not to host website content.

On the face of the allegations and Response, Complainant probably has rights in the underlying business referenced in the domain name.  However, but for the concession made by Respondent’s deficient Response, no proof suggests even a prima facie showing of such probable rights. Complainant produced no extrinsic evidence to show that Complainant has rights to or legitimate interests in a name or mark used in the disputed domain name.  To meet Complainant’s burden, it could have produced documents showing formal legal registration with appropriate authorities, a d/b/a filing, Letters of Incorporation, or ongoing business records that suggest common law rights in an active, ongoing business entity under that name. 

The Panel finds that Complainant also has failed to show that Respondent has no such rights and that, further, Respondent failed to show rights in a mark or the domain name. The Panel’s ultimate holding in the case should not be interpreted to suggest that the Panel believes that Respondent has any such rights.   See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when Respondent does file a Response, Complainant must allege facts, which if true, would establish that Respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by Complainant that establish Respondent lacks rights or legitimate interests in the disputed domain name, the Panel may decline to transfer the disputed domain name).

Under this showing, the Panel finds that Complainant did not satisfy ICANN Policy ¶ 4(a)(ii) to show rights in the name or mark and did not show that Respondent has no rights or legitimate interests.

Registration and Use in Bad Faith

Complainant argues that Respondent registered the disputed domain in order to prevent Complainant from reflecting the mark in a corresponding domain name, pursuant to Policy ¶ 4(b)(ii).  However, to prevail under this section, Complainant is required to show that Respondent has engaged in a pattern of such conduct, which Complainant has not done here.  See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where Respondent engaged in the practice of registering domain names containing the trademarks of others).

Complainant also alleges that Respondent registered the disputed domain name primarily to disrupt the business of Indigo Dye House, Inc.  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also DCI S.A. v. Link Com. Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).  However, this contention directly contradicts Complainant’s recitation of facts that set out that Respondent registered the domain name while it was still an employee of the business and on behalf of the business and that Respondent then stole the name. 

Moreover, Complainant asserts that Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s site by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s site.  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).  Complainant did not offer proof that Respondent has engaged in any activity at the site.  In fact, the Panel notes that only Respondent provided a basis for a holding that it engaged in conduct that could constitute bad faith registration and use: Respondent expressed an intent to engage in no activity at the site.  Passive holding to prevent one with rights from using a name constitutes bad faith under the Policy, especially in light of the totality of the circumstances.  See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (stating, “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Mgt. Plus Enters. Inc. v. MPE Tech. Servs., FA 192746 (Nat. Arb. Forum Oct. 27, 2003) (finding Respondent registered and used the domain name in bad faith where it fraudulently transferred the name to itself, despite the fact that Respondent never technically “registered” the name).

Respondent claims that Complainant cannot succeed in arguing that Respondent registered the mark in order to prevent the owner from reflecting the mark in a corresponding domain name under Policy ¶ 4(b)(ii) because Complainant has not shown itself to be the owner of any registered trademark.   Respondent also argues that it has not registered the domain name for the purpose of disrupting a business competitor because numerous other top-level domain names corresponding to INDIGO DYE HOUSE are available from which Complainant can choose.  See Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”).  Respondent asserts that it did not attempt to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s site because Respondent has never maintained a website corresponding to the disputed domain name; thus, the capability of commercial gain or confusion is not viable.   See Caterpillar Inc. v. Off Road Equip. Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (refusing to find bad faith registration where Complainant failed to submit any evidence that the domain name was registered in bad faith); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the Panel may conclude that Respondent acted in bad faith); see also White Pine Soft., Inc. v. Desktop Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000) (declining to transfer the domain name where a full factual record has not been presented to the Panel such that a conclusive determination can be made regarding the parties’ respective claims to the contested domain name).  Respondent also argues that the ownership of a domain name of a generic matter for the purpose of maintaining e-mail accounts, without any other unfair trade practice or anti-competitive behavior does not form the legal or equitable basis for ordering a transfer of a domain name. The Panel does not address these arguments because Respondent conceded that it registered the domain name for the company.

An additional problem with this case is that these parties bring to this case issues that exceed the scope of the ICANN Policy.  The parties admit a prior relationship in the business but disagree as to that relationship. The Respondent may have engaged in fraudulent conduct in its dealings with the registrar of the domain name. The Respondent stated an intent to bring suit over the ownership issues.  These issues are breach of contract and breach of fiduciary issues between the parties and they are matters to be determined in a court of law and not by a UDRP Panel.  See e.g. Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding an employee’s registration of domain name in his own name and subsequent refusal to transfer it to its employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP Panel); cf. Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (refusing to transfer the domain name and stating that the ICANN Policy does not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy”).

The Panel finds that since the Panel gave no weight to Respondent’s deficient Response, ICANN Policy ¶ 4(a)(iii), requiring a showing of bad faith registration and use, was not satisfied.

DECISION

Having failed to establish all three of the required elements under the ICANN Policy, the Panel concludes that relief shall be DENIED and the Complaint DISMISSED WITHOUT PREJUDICE TO REFILING.

Hon. Carolyn Marks Johnson, Panelist
Dated: January 6, 2004.


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