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Bridal Rings Company v. Abert Yemenian/Albert Yemenian [2000] GENDND 1380 (26 October 2000)

National Arbitration Forum

DECISION

Bridal Rings Company v. Abert Yemenian/Albert Yemenian

Claim Number: FA0009000095608

PARTIES

The Complainant is Bridal Rings Company , Los Angeles, CA, USA ("Complainant") represented by Nicholas Browning. The Respondents are Abert Yemenian/Albert Yemenian, Glendale, CA, USA ("Respondents").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "bridalrings.com" registered with Register.com.

PANELIST(s)

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 the panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 14, 2000; The Forum received a hard copy of the Complaint on September 15, 2000.

On 9/18/00, Register.com confirmed by e-mail to The Forum that the domain name "bridalrings.com" is registered with Register.com and that the Respondents are the current registrant of the name. Register.com has verified that Respondents are bound by the Register.com registration agreement and have thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's UDRP.

On September 25, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 16, 2000 by which Respondents could file a Response to the Complaint, was transmitted to Respondents via e-mail, post and fax, to all entities and persons listed on Respondents' registration as technical,

administrative and billing contacts, and to postmaster@bridalrings.com by e-mail.

On October 23, 2000, pursuant to Complainant's request to have the dispute decided by a One Member panel, the Forum appointed Judge Ralph Yachnin, as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondents to the Complainant.

PARTIES' CONTENTIONS

A. Complainant

Complainant is in the business of selling, designing and manufacturing wedding rings and related items under its "Bridal Rings" trademark and service mark which it has used since 1986.

Complainant invested substantial sums in advertising its business in national, regional and local publications under the "Bridal Rings" mark. As a result, the "Bridal Rings" mark has become associated in the minds of the public with Complainant's products.

Respondents' are the owners of L.A. Jewelry Exchange, a jewelry store located about one block from Complainant's business and also operate an internet site under the domain name "lajewelryexchange.com."

On July 1, 1999, Complainant reserved the domain name "bridalrings.com" and "bridalring.com" with Network Solutions, but they were never issued to Complainant. On December 1, 1999, Network solution wrongfully registered the domain name "bridalrings.com" to Respondent Hasmik Aslania.

As a result of the error of Network Solutions in losing Complainant's registration of "bridalrings.com" in July, 1999, Complaint was forced to adopt the domain name "bridalring.com" on December 6, 1999.

Soon after receiving its registration of the subject domain name, Respondents linked it to their "lajewelryexchange.com" site, thereby attempting to wrongfully draw Complainant's customers to Respondents' site. Complainant demanded Respondent cease using the domain name and also transfer the registration of the domain name to the Complainant. Shortly thereafter Respondents terminated the link, but did not transfer the registration of the domain name, nor is it using it.

The subject domain name "bridalrings.com" is identical to the trademark and service mark of Complainant.

Respondents have no right or legitimate interest in the subject domain name.

Respondents have acted in bad faith.

B. Respondents

"Bridal Rings" is too generic for any jeweler to claim an exclusive right to, and no proof has been offered that the United State Patent Office (hereinafter referred to as USPTO) would give Complainant the exclusive use of such name. Further, Bridal Rings is simply two generic words put together to make up one generic term. The term is descriptive and it has not been shown to have any secondary meaning.

Many jewelers on the same block as Complainant, as well as around the world, use the term "bridal rings" to advertise their products.

There has been no proof displayed that the use of "bridalrings.com" as a link to any jewelry web site would cause or has caused confusion in the minds of anyone.

The fact that there has been advertising in various publications does not prove that secondary meaning has been achieved.

No proof has been evidenced to show that Complainant has spent one million dollars to advertise its name and/or products. Even if such proof is submitted, it is not enough to establish any type of exclusive claim on the term Bridal Rings.

Complainants have not indicated whether they tried to obtain trademark protection for the term Bridal Rings. I f it did it would be denied.

There is no physical store that Respondents operate or know to exist by the name of L.A. Jewelry Exchange.

Respondents did not register the subject domain name to interrupt Complainant's business, or to confuse anyone about any relationship to complainant, and did not even know about Complainant's existence at the time of Registration. Further, Respondent had no constructive notice, for no trademark was registered with the USPTO.

Even if proof of confusion using the term "bridal rings" can be established, Complainants caused that confusion by choosing a generic, and descriptive name for their company.

Respondents linked "bridalrings.com" to "lajewelryexchange.com" to describe a product that Respondents sell, i.e., bridal rings. The linking was to be continued until Respondents put up their own web site which is to be "The JewelryClub.com." The link was disconnected when a letter was received threatening a lawsuit. Respondents still have plans to establish the link on the new site when it is registered.

The reason Network Solutions did not make the subject domain name available to Complainant is because it failed to pay its renewal fee. The fault is Claimant's, not Network Solutions.

FINDING

The Complainant is in the jewelry business under the name Bridal Rings Co., and expends large sums on a considerable amount of advertising, both local, regional and nationally of its name. It has been using the Bridal Rings Co. since 1986, but has not registered it with the USPTO. It claims a common law trade mark and service mark.

In July, 1999 Complainant reserved the name "bridalrings.com" with Network Solutions, but failed to obtain it because it did not pay its renewal fees. On December 1, 1999, Respondents registered the aforesaid domain name. Complainant, on December 6, 1999, registered the domain name "bridalring.com."

The Respondents have a jewelry store in the vicinity of the Complainant's business and own a web site "lajewelryexchange.com" Shortly after receiving the domain name Respondents linked the domain name to their web site. Complainant demanded that they disconnect the link and turn over the domain name to Complainant. Respondent disconnected the link but refused to turn

over the domain name.

The respondent did not register the domain name in order to sell it for a profit.

Respondents linked "bridalrings.com" to "lajewelryexchange.com" to describe a product Respondents sells, i.e., bridal rings. The linking was to be continued until Respondents put up their own web site: "The JewelryClub.com". It was disconnected when Respondents were threatened with a lawsuit. Respondents still have plans to establish the link on the site to be

registered.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:

(1) the domain name registered by the Respondents is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondents have 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

The Complainant contends that the Respondents' domain name is identical and confusingly similar to its mark Bridal Rings Company. That it is, there is no doubt. See William Hill v. Seven Oaks, D2000-0824 (WIPO Sept. 4, 2000). 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 the 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. McCarthy on Trademarks and Unfair Competition, Sect. 25:74.2, Vol 4 (200);. Also see Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000)

The domain name registered by the Respondents is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Rights or Legitimate Interests

The Respondents contend that it has rights in the domain name because it is in the process of developing a website for The Jewelry Club. Bridal rings would be one type of goods that the Respondent plans to sell on its website. Registering the domain name for use in connection with a bona fide offering of goods and services proves rights and legitimate interests in the domain

name. See Primedia Special Interest Publications v. John J. Treadway ,D2000-0752 (WIPO Aug. 21, 2000) (finding that the Respondent has rights in the domain name because he has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and service.) Also see Phillippe Tenehaus v.

Telepathy, Inc.,FA94355 (Nat. Arb. Forum May 17, 2000) and Soccerplex, Inc. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that Complainant failed to show that it should be granted exclusive use of the domain name "soccerzone.com" as it contains generic terms and is not exclusively associated with is business.)

The Complainant has failed to establish that the Respondents have no rights or legitimate interests in respect of the domain name.

Registration and Use in Bad Faith

The Respondent denies that the domain name was registered or used in bad faith. The Respondent claims that he did not register the domain name in order to disrupt the Complainant's business or to cause confusion with its business. See Asphalt Research Technology, Inc. v. Anything.com, D2000-0967 (WIPO Oct 2, 2000) (finding that the Complainant has failed to prove that the domain name "ezstreet.com" was registered and is being used in bad faith or held passively for use by the Respondent in bad faith); Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith where even though Respondent's ownership and purported use of the domain name frustrates Complainant's efforts, the record does not indicate any purpose or intent on the part of the Respondent to prevent Complainant form reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent's site by creating a likelihood of confusion.)

The Complainant has failed to established that the domain name has been registered and is being used in bad faith.

Although the Complainant could not meet its burden under ICANN'S Policy, it may have recourse in the Courts. Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat Arb. Forum July 20, 2000) (stating that the policy is intended to resolve only a narrow class of cases of "abusive registrations" and does not extend to cases where a registered domain name is subject to a legitimate dispute, which is relegated to the Courts.)

DECISION

THE UNDERSIGNED DETERMINES THAT COMPLAINANT HAS FAILED TO PREVAIL IN ITS CLAIM AGAINST THE RESPONDENTS. IT IS FURTHER DETERMINED THAT THE RESPONDENT IS RIGHTFULLY ENTITLED TO BE LISTED WITH REGISTER.COM AS THE REGISTRANT OF THE DOMAIN NAME "BRIDALRINGS.COM."

Ralph Yachnin

Justice, NY State Supreme Court (Ret.)

Dated: October 26, 2000