Janafeifer.com

The timeline behind janafeifer.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Jana Feifer, Inc. v. Domain Deluxe Claim Number: FA0502000422804 PARTIES Complainant is Jana Feifer, Inc. (“Complainant”), represented by Steve Tandberg of Onestop Internet, Inc., 2652 Long Beach Ave., Los Angeles, CA 90058. Respondent is Domain Deluxe (“Respondent”), GPO 7628 Central, Hong Kong. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <janafeifer.com>, registered with Domainpeople Inc. PANEL 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. Sandra Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2005. On February 18, 2005, Domainpeople Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <janafeifer.com> is registered with Domainpeople Inc. and that Respondent is the current registrant of the name. Domainpeople Inc. has verified that Respondent is bound by the Domainpeople 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 February 22, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 14, 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@janafeifer.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On March 17, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin 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. 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 <janafeifer.com> domain name is identical to Complainant’s JANA FEIFER mark. 2. Respondent does not have any rights or legitimate interests in the <janafeifer.com> domain name. 3. Respondent registered and used the <janafeifer.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Jana Feifer, Inc., is in the business of marketing and selling cosmetics, purses, and women’s clothing. Complainant filed a registration for the JANA FEIFER mark with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 78/320,821) on October 30, 2003. As of the filing date of this dispute, Complainant’s mark has not yet been registered. Respondent registered the <janafeifer.com> domain name on November 14, 2003. Respondent is using the disputed domain name to direct Internet users to a website that displays a generic search engine, links to commercial websites including handbag and purse-related sites, and exposes users to pay-per-click search results. 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 alleges rights in the JANA FEIFER mark as the result of Complainant’s service mark registration application with the USPTO, and refers to customers who know the mark. Various panels have found or alluded to the potentiality for rights to exist in a mark as the result of trademark or service mark applications with legitimate governmental authorities. See, for example, Serverworks Corp. v. Directname, FA 146929 (Nat. Arb. Forum Apr. 14, 2003) (“Complainant has established rights in the SERVERWORKS mark through proof of application for a trademark with the USPTO, as well as through use of the mark in commerce.”); see also ROI Solutions, Inc. v. Jaewan, FA 95914 (Nat. Arb. Forum Jan. 17, 2001) (“[A] pending federal trademark application, combined with prior use of the mark is sufficient evidence on which to find that Complainant 'has rights' in a trademark or service mark.”); see also Aston v. Pierrets, FA 117322 (Nat. Arb. Forum Sept. 27, 2002) stating in dicta that “[e]vidence that Complainant is actively seeking trademark protection for a mark in question is enough to show rights in the mark sufficient to establish standing.”. Complainant provides evidence of common law rights in the JANA FEIFER mark by using it commercially as the company name and by offering goods under the name. It should be noted that the mark is the name of a person and it is highly unlikely that the name would be independently selected by another party. The Panel finds that Complainant has demonstrated rights in its mark pursuant to Policy ¶ 4(a)(i). See 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”; see also 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. The domain name registered by Respondent, <janafeifer.com>, is identical to Complainant’s JANA FEIFER mark because the only difference is the addition of the generic top-level domain “.com.” This slight change does not significantly distinguish the domain name from the mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant; see also Sporty's Farm L.L.C. vs. Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000), ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com."); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. The Panel finds that Policy ¶ 4(a)(i) has been established. Rights or Legitimate Interests Complainant has argued that Respondent has no rights or legitimate interests in the domain name that incorporates Complainant’s mark. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”; see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest a complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) drawing two inferences based on Respondent’s failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts. Respondent is using the <janafeifer.com> domain name to direct Internet users to a website that features advertising for a variety of services and hosts a search engine to link viewers to an array of websites, including sites that offer the same type of products that Complainant offers. Respondent’s use of the domain name, which is identical to Complainant’s JANA FEIFER mark, to direct Internet users interested in Complainant’s products to a commercial website that offers a search engine and links to handbag and purse-related websites is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use; see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of the complainant, was not a bona fide offering of goods or services; see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) finding that the respondent had no rights or legitimate interests in the disputed domain name where it used the complainant’s mark, without authorization, to attract Internet users to its business, which competed with the complainant. Nothing in the record, including the WHOIS domain name registration information, for the <janafeifer.com> domain name dispute suggests that Respondent is commonly known by the domain name or by Complainant’s JANA FEIFER mark. Therefore, Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that the respondent does not have rights in a domain name when the respondent is not known by the mark; see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail". The Panel finds that Policy ¶ 4(a)(ii) has been established. Registration and Use in Bad Faith Respondent registered and used the <janafeifer.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Specifically, uncontested evidence indicates that the subject domain name earns referral-fee revenue for Respondent through pay-per-click advertising. Thus, the Panel infers that Respondent commercially benefits from its use of Complainant’s JANA FEIFER mark in the domain name. See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the Complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) finding bad faith where the respondent registered and used an infringing domain name to attract users to a website sponsored by the respondent. Respondent is using the disputed domain name to redirect Internet users to a website that offers a search engine and links to various handbag and purse-related websites. Complainant’s business offers handbags and purse-related products. The Panel finds that, by creating confusion around Complainant’s mark, Respondent is attempting to disrupt the business of a competitor. Respondent’s use of Complainant’s mark to offer goods and services similar to Complainant’s goods and services is evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) finding the respondent acted in bad faith by attracting Internet users to a website that competes with the 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 the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business; see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com>, which is identical to Complainant’s services under the OPENMAIL mark. The Panel finds that Policy ¶ 4(a)(iii) has been established. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <janafeifer.com > domain name be TRANSFERRED from Respondent to Complainant. Sandra Franklin, Panelist Dated: March 31, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.