WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M, Inc. v. Dave Talebi
Case No. D2004-0409
1. The Parties
The Complainant is M, Inc., Santa Clara, California, United States of America, represented by the law firm Kronenberger & Associates, San Francisco, California, United States of America.
The Respondent is Dave Talebi, an individual residing in Costa Mesa, California, United States of America. Mr. Talebi has submitted a Response on his own behalf.
2. The Domain Name and Registrar
The disputed domain name is (“Disputed Domain Name”), registered with R.
3. Procedural History
On June 4, 2004, (a) the Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”); (b) the Center transmitted by email to R a request for registrar verification in connection with the domain name at issue; and (c) R transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2004. The Response was filed with the Center on June 22, 2004.
The Center appointed Richard G. Lyon as the sole panelist in this matter on July�13,�2004. The Panel finds that it was properly constituted. The Panelist has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is in the business of selling computer memory online. According to the Complaint and supporting Declaration of Complainant’s president, Complainant has engaged in this business since 1998, under its corporate name, M. Complainant does not allege that it has any registered trademark. Complainant sells its products online at a website with the domain name .
Respondent registered the Disputed Domain Name -- which differs by a single letter from Complainant’s corporate name and web address -- in October 2002.
Whether or not Respondent sold computer memory is the only disputed factual matter. In his response Respondent states that he “was also in the business of selling memory, and the business failed.” In his Declaration Complainant’s president states that Respondent told him Respondent was in the “airline industry.”
Shortly after registering the Disputed Domain Name, Respondent used it for a website with a single page that included notation “This site for sale,” and a .jpg graphic of a memory card that is -- with the exception of deleting the “s” in memorydealers -- identical to a graphic used by Complainant on its website. Complainant has submitted as evidence a copy of Respondent’s web page and html code of the Complainant’s graphic that Respondent copied. Complainant did not authorize Respondent’s use of this graphic.
Complainant’s president also declares that he spoke with Respondent by telephone on several occasions, and that during these conversations Respondent “he [Respondent] registered the [Disputed Domain Name] about him selling the [Disputed Domain Name] to [Complainant].”
Respondent’s other factual assertions are set forth in the Response, which is quoted in full in section 5-B below. The Disputed Domain Name does not currently resolve to any website; a recent search by the Panelist resulted in “This page cannot be found.”
5. Parties’ Contentions
A. Complainant
Complainant’s allegations may be summarized as follows:
Confusingly similar to a mark in which Complainant has rights. Complainant has common law trademark rights in its corporate name by reason of continuous sales under that name since 1998. The Disputed Domain Name differs from Complainant’s mark by a single letter and is therefore confusingly similar to Complainant’s “trademark” Complainant, through its president, has submitted evidence that customers, prospective customers, and others have been confused by Respondent’s website. Confusion has included checks made out to , enquiries about whether the business has been sold, and confusion of job applicants who have attempted to research Complainant and its business. Respondent’s intentional use of Complainant’s graphic indicates that Respondent intended this confusion.
Rights or Legitimate Interest. There is no evidence that Respondent is or has ever been known by the word memorydealer or was ever involved in reselling computer memory. Complainant has not licensed Respondent to use its corporate name or common law trademark.
Bad Faith. Respondent’s selecting a domain name that differs by a single letter from Complainant’s mark, misappropriation of Complainant’s graphic immediately after establishing his website, and offering the Disputed Domain Name for sale shortly after registering the Disputed Domain Name all evidence bad faith in both registration and use. The fact that Respondent is currently making no use of the Disputed Domain Name is further evidence of use in bad faith.
B. Respondent
Respondent. The Response consists of a single email message to the Center. Rather than attempt to characterize this, it is set out in full:
“this is my official response. this dispute is bogus and i have no more to say to the party alleging this whole arguement [sic]. i was also in business selling memory and the business failed so in turn i decided to sell it memorydealers did not want to pay so in turn they tried to sabotage my site through my web hosting company sending the bogus emails and bogus pictures. i will not talk about this any further i advised if he wanted to buy this site he would have 72 hrs to decide to pay me he did not so it went to the highest bidder. the site has been sold. they can pursue me legally by taking me to court.”
6. Discussion and Findings
The Complainant must prove the elements set out in paragraph 4(a) of the Policy:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and
(iii) Respondent’s Domain Name has been registered and is being used in bad faith.
The Complainant bears the burden of proof on each of these elements.
A. Identical or Confusingly Similar to a Mark in which Complainant has Rights
As is often the case, similarity and confusion are obvious from a simple comparison of the Disputed Domain Name with Complainant’s corporate name and mark. The question under this subparagraph of the Policy is whether Complainant has rights in that allow it to invoke the Policy.
There is no question that common law rights suffice for purposes of Paragraph 4(a)(i). This is so even when the trade name Complainant uses is descriptive, and therefore might not be capable of registration as a trademark. See, e.g., James Good o/a P v. Mark Anderson, WIPO Case No. D2004-0391 (
). Complainant’s president has asserted, without contradiction by Respondent, that Complainant has used its corporate name to sell products since 1998, and includes the names of prominent customers. An examination of the Complainant’s website reveals clear commercial use of the mark. As in the Pornreports case, Complainant’s use of his mark in commerce could be better substantiated, but in the Panel’s view it is adequate to demonstrate common law rights in memorydealers that satisfy this element of the Policy.
B. Rights or Legitimate Interests
The owner of a descriptive or generic trademark holds a right to exclude others that is far more circumscribed than if the mark is fanciful. See, e.g., The Crown in Right of the State of Tasmania v. Craven, WIPO Case No. DAU2003-0001 ; Classmates Online, Inc. v. John Zuccarini, WIPO Case No. D2002-0635, and cases cited in footnotes 5-7 (); Ciphergen BioSystems v. David Sabatini, WIPO Case No. D2002-0600 (). This Complainant’s right may be limited even further, since it has no registered trademark and has submitted no evidence of what is referred to in trademark parlance as secondary meaning. The complainants in the Classmates and proteinchip cases, for example, held registered marks, and both provided empirical evidence of brand recognition. The only evidence Complainant offers is its president’s declaration of sales under that name. All this renders Complainant’s burden of proof under Paragraph 4(a)(ii) of the Policy that much more difficult, since it is easy to imagine how others in the same or closely related business could legitimately claim a right to use a descriptive term as its web address.
Complainant has, however, demonstrated with competent evidence that Respondent selected the Disputed Domain Name with knowledge of Complainant’s corporate name (and, for purposes of the Policy, trademark) and business. Complainant has asserted, and Respondent has admitted, communications between the parties shortly after registration of the Disputed Domain Name regarding the existence of Complainant’s trade name and its claim of rights.
Any intentional use of a competitor’s mark, even a “weak” mark, to attract, divert, or mislead the competitor’s customers is not legitimate use. Respondent’s unauthorized use and alteration of Complainant’s graphic serves both to emphasize the illegitimate nature of Respondent’s use of the descriptive term and as an admission that he was aware of Complainant’s trade name when he registered the Disputed Domain Name.
Respondent’s only evidence of legitimate use is his statement in the Response that he once sold computer memory.1 As noted in the preceding paragraph, however, even if true Respondent’s use was in the circumstances not legitimate; on the contrary, it illustrates that Respondent competed with Complainant, a fact that makes his selection of a close variation of Complainant’s trade name less justified. Respondent has offered no evidence that he meets any of the safe harbors in paragraph 4(a)(ii) of the Policy: that he was previously known or did business under this name; that he “made demonstrable preparations to use” the Disputed Domain Name for a bona fide offering goods and services, or that his use is non-commercial. The evidence shows an intentional attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark and site.
C. Registered and Used in Bad Faith
The factors listed in the preceding subsection make out Complainant’s proof of Respondent’s bad faith in registration and use of the Disputed Domain Name. And there is more: shortly after registering the Disputed Domain Name Respondent offered it for sale on his website, and Respondent admits offering the Disputed Domain Name for sale to Complainant. This is a textbook case of cybersquatting.
7. Decision
For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Dated: July 20, 2004
1 Without an opportunity to cross-examine or otherwise challenge Respondent's statement, this statement is certainly entitled to as much weight as the contrary statement of Complainant’s president.
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