Complainant is Evamor Products, LLC of New Orleans, Louisiana, United States of America ("United States"), represented by Kenyon & Kenyon of New York, United States.
Respondent is Mikayel Israyelyan, Muse Lifestyle Group, Hollywood, California, United States, represented by Law Offices of Mark Rabinovich, PC of Encino, California, United States. 2. The Domain Names and Registrar
The disputed domain names , and are registered with GoD, LLC. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 29, 2014. On July 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 31, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact detail. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on August 7, 2014.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 Respondent of the Complaint, and the proceedings commenced on August 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2014. On August 27, 2014, the Center received an email communication from Respondent requesting the extension of the Response due date. On August 28, 2014, the Center requested the Complainant's comments on the requested extension. On August 28, 2014, Complainant informed the Center that it did not object to Respondent's request. On the same date, the Center granted an extension until September 3, 2014. The Response was filed with the Center on September 3, 2014.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 16, 2014. The Panel finds that it was properly constituted. The Panel has submitted the 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 states that it "is a subsidiary of Wm. B. Reily & Company, Inc., which has been offering consumers high-quality products and services for over a century" and that Complainant's "products include bottled artesian water… sold in grocery stores and restaurants throughout the United States, and Wm. B. Reily & Company, Inc.'s products are sold internationally."
As described further below, Complainant states that it owns multiple trademark registrations for the mark EVA "for use in connection with bottled artesian drinking water and other beverages, with rights dating back to at least as early as August 20, 1999."
Complainant states that it "owns multiple domain names that contain the EVA mark, including, without limitation, , , , , and ."
Complainant states that "[t]he website content at the Disputed Domain Names does not offer any goods or services, but instead consists of a single splash page Evamor's EVA mark in the form 'EVA WATER,' and the words 'coming soon.'"
The disputed domain names were created on July 16, 2001 () and May 14, 2005 ( and ). 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights because Complainant owns multiple trademark registrations that include the mark EVA, including the following:
- U.S. Reg. No. 2,300,929 for EVAMOR for use in connection with bottled drinking water (first used in commerce on August 20, 1999; filed on July 6, 1998; registered on December 14, 1999).
- U.S. Reg. No. 3,106,230 for EVAMOR & Design for use in connection with bottled drinking water (first used in commerce on August 31, 2004; filed on January 19, 2005; registered on June 20, 2006).
- U.S. Reg. No. 4,459,144 for EVA for use in connection with bottled drinking water (first used in commerce on May 1, 2001; filed on May 21, 2013; registered on December 31, 2013).
Complainant contends that "[t]he Disputed Domain Names are virtually identical to the EVA mark because they incorporate the EVA mark in its entirety, together with the terms 'water' and 'artesian water,' which are generic terms that are highly descriptive of [Complainant]'s bottled artesian drinking water goods" and "[t]he addition of generic/descriptive terms, such as 'water' and 'artesian water' cannot reduce the likelihood of confusion."
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names because "an unauthorized party cannot claim a legitimate interest in a domain name that contains, or is confusingly similar to, a complainant's mark, as such party's activities cannot constitute a bona fide offering of goods and services under the Policy"; "Respondent has used the Disputed Domain Names to exploit the goodwill and renown of Complainant's EVA mark"; "Respondent intentionally trades on the renown of the EVA mark to deceive consumers into believing that the Disputed Domain Names are the official domain of Evamor's EVA branded artesian water -- possibly for future use in connection with phishing schemes or other strategies to defraud Evamor's consumers"; Respondent had constructive notice of Complainant's EVA trademark because "Respondent did not create the Disputed Domain Names until years after Complainant owned a federal trademark registration incorporating the EVA mark"; Respondent lost an opposition proceeding on August 6, 2013, at the U.S. Patent and Trademark office Trademark Trial and Appeal Board (No. 91/209,906) regarding the mark EVAWATER and therefore "clearly has had knowledge of Complainant's exclusive rights in the EVA mark"; "Complainant has never authorized Respondent's use of the EVA mark"; and "Respondent cannot claim to have been commonly known by the Disputed Domain Names under the Policy."
Complainant contends that the disputed domain names were registered and are being used in bad faith because "Complainant's EVA mark is clearly distinctive and is widely recognized as referring exclusively to Evamor, as evidenced by its long use and multiple registrations and domains"; "It is clear that Respondent chose the Disputed Domain Names in an effort to free ride on the goodwill earned by Evamor in the EVA mark"; "[i]t is apparent that Respondent's intent is to use the Disputed Domain Names to either generate traffic or to deceive and confuse consumers"; and "Respondent is using the Disputed Domain Names to falsely imply an affiliation with Complainant, and to capitalize on the confusion of consumers by diverting traffic from Evamor." B. Respondent
Respondent contends, and provides a declaration and other documentation in support thereof, that Mikeayel Israyelyan "owns one hundred percent of the membership interest in Muse Lifestyle Group, LLC as well as Pacific Homes, LLC," the latter of which "is an entity registered in the Republic of Armenia" and which owns land in Armenia containing "sources of artesian water" and a "functioning bottling plant" managed by Vahe Israyelyan, Mikeayel Israyelyan's cousin.
Respondent contends that its own "Evawater [product] was not created with knowledge of the Complainant's trademark" and that "Mr. Israyelyan has not registered [the] domain[s] with knowledge of the Complainant's trademark." Rather, Respondent contends that he named this product after Eva Israyelyan, Respondent Mikeayel Israyelyan's daughter, for whom Respondent provided a copy of the birth certificate.
Respondent contends that "since [its] product was and is distributed beyond the territorial boundaries of the United States, the verification of U.S. rights was neither required nor actually performed at the time the name was developed and the manufacturing of the product started." Respondent contends that "where a product is manufactured and distributed outside of the United States, such manufacture and distribution is not made 'pursuant to a constructive notice' because the constructive notice is presumed to exist only within the boundaries of the United States of America."
Respondent contends that the disputed domain names "have not been registered for the purpose of sale to any third party", that they "have not been registered for the purpose of preventing the 'mark owner' from using it", and that they "have not been registered to disrupt the business of the Complainant". Further, Respondent contends that "Complainant and Respondent are not competitors in the same market."
Finally, Respondent contends that the disputed domain names "have been created for the purpose of informing the public [of] Respondent's product", that "[t]here is no sale of products through the relevant websites, and the product name, content in Armenian as well as English, and the identification of manufacturer at the bottom lower corner clearly differentiates Evawater products from the products of any third party", and "[t]he main website for Evawater, which is currently being constructed, will contain disclaimers differentiating the products from other manufactures of similar products, including the Complainant in the United States." 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and is being used in bad faith. Policy, paragraph 4(a).
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant's ability to prove the other element(s) required by the Policy. Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc.,WIPO Case No. D2005-1246 ("[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element,… it is not necessary to make a finding under the second element of the Policy"); Micro Electronics, Inc. v. MicroCenter,WIPO Case No. D2005-1289 (where the complainant failed to prove the second element of the Policy, "there is no need for the Panel to address the third element of the Policy"). Therefore, given that the Panel in the instant case finds, as discussed below, that Complainant has failed to prove the second element of the Policy – that is, paragraph 4(a)(ii) – the Panel makes no findings with respect to the third element of the Policy. A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the EVA and EVAMOR trademarks.
As to whether the disputed domain names are identical or confusingly similar to the EVA trademark, the relevant comparison to be made is with the second-level portion of the disputed domain names only (i.e., "evaartesianwater" and "evawater"), as it is well-established that the generic Top-Level Domains (i.e., ".com" and ".net") should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 ("The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.").
The addition of certain words, as here, can increase confusing similarity. See, e.g. Yellow Corporation v. MIC,WIPO Case No. D2003-0748 ("when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity"). Here, because the words "water" and "artesian water" are associated with Complainants' products, these words increase the confusing similarity between the disputed domain names and Complainant's EVA trademark. See, e.g. Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained "the central element of the Complainant's GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business").
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. "Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name." WIPO Overview 2.0, paragraph 2.1.
Here, Respondent has provided substantial allegations and evidence regarding its rights and legitimate interests in the disputed domain names. The Response includes a six-page declaration signed by Respondent Mikayel Israyelyan, along with eight annexes (including photographs of Respondent's factory in Armenia, the birth certificate for Eva Israyelyan and screenshots for Respondent's Eva Water product using non-English words). This declaration and annexes support Respondent's stated reasons for registering the disputed domain names, its ignorance of Complainant's U.S. rights in the EVA trademark, its business activities exclusively outside the United States and its current and planned uses for the disputed domain names.
These allegations and evidence, which the Panel has no reason to question, are consistent with the Respondent's use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, before any notice of this dispute – as protected by paragraph 4(c)(i) of the Policy. See, e.g., FINAXA Société Anonyme v. Vitalie Popa,WIPO Case No. D2004-0873, in which the panel failed to find that the respondent lacked rights or legitimate interests, noting that "Respondent points out that its offerings of goods and services only target companies and individuals within the Republic of Moldova, a country in which Complainant is neither active nor known to a greater public."
Although Complainant's reference to the opposition proceeding at the U.S. Trademark Trial and Appeal Board ("TTAB") regarding Respondent's application for the mark EVAWATER is interesting, the Panel does not find it directly relevant to this proceeding. The defendant in the TTAB proceeding was Evawater, Inc., not Mikayel Israyelyan or Muse Lifestyle Group. Further, the TTAB proceeding resulted in a default judgment with respect to a single trademark application and is not conclusive as to whether the defendant in that proceeding – let alone the Respondent in this proceeding – lacks rights or legitimate interests in the mark EVA.
Accordingly, the Panel finds that Complainant has failed to prove the second element of the Policy. C. Registered and Used in Bad Faith
As stated above, given that the Panel in the instant case finds that Complainant has failed to prove the second element of the Policy – that is, paragraph 4(a)(ii) – the Panel makes no findings with respect to the third element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Douglas M. Isenberg
Sole Panelist
Date: September 30, 2014
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