Abraham Sengul, d/b/a House of Baguettes v. United Diamonds
Claim Number: FA0509000568414
Complainant is Abraham Sengul, d/b/a House of Baguettes (“Complainant”), represented by Karl S. Kronenberger, of Kronenberger & Associates, 220 Montgomery Street, Suite 1920, San Francisco, CA 94104. Respondent is United Diamonds (“Respondent”), 9404 Brilliant Ore, Las Vegas, NV 89143.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <houseofbaguettes.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 28, 2005.
On September 28, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <houseofbaguettes.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 September 29, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 19, 2005 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@houseofbaguettes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 25, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <houseofbaguettes.com> domain name is identical to Complainant’s HOUSE OF BAGUETTES mark.
2. Respondent does not have any rights or legitimate interests in the <houseofbaguettes.com> domain name.
3. Respondent registered and used the <houseofbaguettes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Abraham Sengul, d/b/a House of Baguettes operates a family business that sells diamonds and jewelry primarily at the wholesale level under its well-known HOUSE OF BAGUETTES mark throughout the United States and internationally. Complainant has used the HOUSE OF BAGUETTES mark continuously in commerce since 1989. Complainant spends $250,000 annually in advertising through trade shows, consumer magazines, and direct mail
Complainant has filed a trademark application for its HOUSE OF BAGUETTES mark with the United States Patent and Trademark Office (“USPTO”) (Serial No. 76/606781 filed on August 13, 2004).
Respondent registered the <houseofbaguettes.com> domain name on June 2, 2003. Respondent’s domain name resolves to a website that features products and services that directly compete with Complainant’s business. Respondent offered to sell the disputed domain name to Complainant for $25,000.
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.
Complainant established a background of use that supports common law rights in the HOUSE OF BAGUETTES mark. Under Policy ¶ 4(a)(i), a complainant need not hold a registered trademark to establish rights in a mark: common law rights are sufficient. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (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); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
The Panel finds that Complainant established common law rights in the HOUSE OF BAGUETTES mark through its longstanding and continuous U.S. and international use of the mark in commerce for some sixteen years. The Panel accepts evidence of Complainant’s marketing expenditures to establish Complainant’s rights in the HOUSE OF BAGUETTES mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Additionally, the Panel finds that Respondent’s <houseofbaguettes.com> domain name is identical to Complainant’s HOUSE OF BAGUETTES mark pursuant to Policy ¶ 4(a)(i), as the domain name fully incorporates the mark and merely adds the generic top-level domain “.com.” 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or legitimate interests in the <houseofbaguettes.com> domain name. When a complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such rights or legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Moreover, Respondent is not commonly known by the <houseofbaguettes.com> domain name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Furthermore, Respondent is using the <houseofbaguettes.com> domain name to operate a commercial
website that features goods that directly compete with those offered by
Complainant. The Panel finds that
Respondent’s use of a domain name that is identical to Complainant’s mark to
divert Internet users to its website for Respondent’s own commercial gain does
not constitute a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See 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).”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where the
respondent attempted to profit using the complainant’s mark by redirecting
Internet traffic to its own website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has registered and used
the <houseofbaguettes.com> domain
name in bad faith pursuant to Policy ¶ 4(b)(i) because Respondent offered to
sell the disputed domain name registration to Complainant. The Panel accepts Complainant’s assertion
that Respondent offered the disputed domain name for sale at a price of
$25,000. Thus, the Panel finds that
Respondent’s offer to sell the domain name registration for an amount far in
excess of Respondent’s out-of-pocket costs is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA
197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed
domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and
use pursuant to Policy ¶ 4(b)(i).”); see
also Tech. Props., Inc v.
Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where
the respondent verbally offered the domain names for sale for $2,000).
The Panel finds that Respondent has registered and used the <houseofbaguettes.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by using the domain name, which contains an identical version of Complainant's HOUSE OF BAGUETTES mark, to sell jewelry in direct competition with Complainant. Such use constitutes disruption and is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See 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 EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from complainant's marks suggests that respondent, complainant's competitor, registered the names primarily for the purpose of disrupting complainant's business).
Moreover, Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv), as Respondent is using the <houseofbaguettes.com> domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant's mark to sell the complainant's products); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
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 <houseofbaguettes.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 7, 2005
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