Vievieboutique.com

The timeline behind vievieboutique.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 Farhad Parsie v. Vie Vie Boutique Claim Number: FA0803001158835 PARTIES Complainant is Farhad Parsie (“Complainant”), California, USA. Respondent is Vie Vie Boutique (“Respondent”), represented by Verlene Morgan, California, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <vievieboutique.com>, registered with GoDaddy.com, Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. James A. Carmody, Esq., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 9, 2008. On March 11, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <vievieboutique.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 March 26, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 2008 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@vievieboutique.com by e-mail. A timely Response was received and determined to be complete on April 3, 2008. An Additional Submission was received from Complainant on April 7, 2008 and determined to be timely and complete in compliance with the National Arbitration Forum’s Supplemental Rule 7. Complainant submitted a timely Additional Submission which was considered by the Panel. On April 14, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist. The Complainant filed an Additional Submission which was considered by the Panel. 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 <vieviebotique.com> domain name, the domain name at issue, is identical or confusingly similar to Complainant’s VIEVIE trademark. 2. Respondent does not have any rights or legitimate interests in the domain name at issue. 3. Respondent registered and used the domain name at issue in bad faith. B. Respondent makes the following assertions: 1. Respondent had rights in VIE VIE BOTIQUE prior to any registration of a trademark by Complainant for VIEVIE. 2. Respondent has rights in the domain name at issue by virtue of using VIE VIE BOTIQUE in business to sell clothing since 2002. 3. Respondent did not register nor has it used the domain name at issue in bad faith. C. Additional Submissions Complainant filed an Additional Submission which was reviewed by the Panel. FINDINGS Complainant registered the VIEVIE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,226,506 issued April 10, 2007, filed March 27, 2006) with a claimed date of first use in commerce in April of 1999 in connection with womens’ clothing. The <vieviebotique.com> domain name at issue was registered in January of 2007. Both Complainant (San Francisco) and Respondent (Oakland) sell women’s clothing in the San Francisco Bay Area. Complainant denies that he has authorized Respondent to use the VIEVIE mark or to register the domain name at issue and that actual confusion in the mind of the public has occurred. Respondent has filed a Response supported by no evidence whatsoever alleging as a defense that she has been in business since 2002 at various locations using the mark VIE VIE BOTIQUE and that registration of the domain name at issue was in support of that business. 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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 has rights in the VIEVIE mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,226,506 issued April 10, 2007, filed March 27, 2006). Since Complainant’s trademark application has been approved, Complainant’s trademark rights date back to the filing of the trademark application. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Respondent did not register the domain name at issue until 2007. The <vievieboutique.com> domain name is confusingly similar to Complainant’s VIEVIE mark given that the disputed domain name incorporates Complainant’s entire mark, while adding the generic word “boutique” and the generic top-level domain (“gTLD”) “.com.” Generic top-level domains are irrelevant to a Policy ¶ 4(a)(i) analysis, and generic words that describe a complainant’s operations also fail to distinguish a disputed domain name. Accordingly, Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See 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); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii); accordingly, the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Respondent has provided no proof whatsoever that her business is commonly known by the <vievieboutique.com> domain name. The WHOIS domain name registration information lists the registrant as “Vie Vie Boutique,” and Respondent asserts that she is commonly known by the disputed domain name. However, in light of the inadequate evidence to support Respondent’s contentions, the Panel finds that that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”). There is no evidence whatsoever to the effect that Complainant consented to use of the VIEVIE mark in any form. The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent’s registration and use of the VIE VIE mark within the disputed domain name has caused substantial confusion among Complainant’s customers, particularly since the Parties both sell clothing for women in the San Francisco Bay Area. Respondent has engaged in bad faith registration and use of the disputed domain name, as it caused a likelihood of confusion for commercial gain regarding the source and affiliation of the disputed domain name and corresponding website. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent). Further, Respondent should have been aware, or alternatively, was constructively aware of Complainant’s rights in the VIE VIE mark given Complainant’s store in adjacent San Francisco and its U.S.P.T.O. registration of the mark. Respondent engaged in bad faith registration and use of the disputed domain name due to this actual or constructive knowledge of Complainant’s rights in the mark. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 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 <vievieboutique.com> domain name be TRANSFERRED from Respondent to Complainant. James A. Carmody, Panelist Dated: April 28, 2008 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.