Generic Top Level Domain Name (gTLD) Decisions

ROBIN WELLS
COMPLAINANT,

vs.

ELEVEN ENTERTAINMENT
RESPONDENT.

DECISION
File No.: FA0004000094453

The above entitled matter came on for an administrative hearing on June 14, 2000,  before the undersigned on the Complaint of Robin Wells,  (“Complainant”) against Eleven Entertainment, (“Respondent”).  Upon the written submitted record including the Complaint and Respondent’s Response to Domain Complaint, the following DECISION is rendered:

PROCEDURAL FINDINGS

U.S. Trademark Registration Serial No.: 75648338 (filing date 2/25/99)

Trademark Applicant/Owner: Robin L. Wells

UK Trademark Registration No. 2205017

Registration Date: August 5, 1999

Registration Name: ROYALHEIRS

Domain Name: royalheirs.com

Domain Name Registrar: Hostmaster Ho 1320-org

Domain Name Registrant: eleven entertainment

Date of Domain Name Registration: April 27, 1999

Date Complaint Filed: April 17, 2000 (received)

Date Response to Complaint Filed: May 8, 2000

After reviewing the complaint, and determining it to be in administrative compliance, the National Arbitration Forum (“Forum) forwarded the complaint to the respondent  in compliance with Rule 2(a)^{[1] and the administrative proceeding was commenced pursuant to Rule 4(c).  In compliance with Rule 4(d), the Forum immediately notified Hostmaster Ho 1320-org that the administrative proceeding had commenced.  The complainant elected to have this administrative proceeding conducted by a single arbitrator and paid the appropriate fee for same.  The Complaint and the Respondent’s Response to Domain Complaint were docketed and forwarded to the undersigned arbitrator for decision.}

FINDINGS OF FACT

1.         The complainant is Robin Wells, who claims the name of “Royal Heirs”.  Attached to her Complaint is a copy of the United States Trademark electronic search system which shows that the mark R O Y A L HEIRS was filed as a trademark on February 25, 1999, by Robin Wells.  Also attached to the complainant’s Complaint is a Certificate of Registration in the Trademark Registry showing that the name ROYAL Heirs was registered on August 5, 1999,  The mark was registered in the name of “Young at Heart, Inc.” of the United States of America.

2.         The Complaint alleges that the products related to the mark first came into use on October 12, 1998.

3.         The name Royal Heirs is the brand name of a high-end bath line sold at Neiman Marcus, Fred Segal and many boutique stores throughout the United States, they are marketed to girls ages 5 to 12, and the aforesaid bath line was developed as W.C.P. Color Graphics starting in 1998.  The products are soaps, essential oils, perfumes, fragrances, shampoos, hair conditioners, non-medicated toilet preparation, body lotions, eau de toilet, facial balm, preparations for use in the bath and shower, bubble bath, nail varnishes and polishes.

4.         The respondent’s mark is also Royal Heirs, and his web site is www.royalheirs.com.

5.         The Complaint further alleges that the respondent, Mark Palloti, cybersquatted the name by registering and posting a male pornographic home page.

6.         Palloti claims that he offered to sell his domain name to the complainant for $2,750, which is the amount he says he invested for lawyers, registration fee to Network Solutions, development costs of the site and promotional materials. 

7.         The Complaint alleges that an employee of W.C.P., Greg Drew, passed the brand name Royal Heirs on to Mark Palloti, a friend of Drew, and that Mr. Palloti thereafter cybersquatted the name. 

8.         Attached to the Complaint is the signed statement of Alicia Aispuro, a receptionist at WCP Color Graphics who says she received a number of phone calls from Mark Palloti directed to Greg Drew and that the phone calls were of a personal nature. 

9.         In his Answer, Mr. Palloti concedes that his domain name, royalheirs.com, is “indeed similar to Ms. Wells’ trademark”.  He claims when he bought the domain name, “Royal Heirs”, there was no trademark on the name, although he does not state when he purchased the domain name or from whom he purchased it. 

10.       Palloti admits that he does not own a trademark on the name www.royalheirs.com but that he registered the name in good faith, although as noted, the complainant claims that her trademark was registered in February, 1999.

11.       The respondent further claims that he was approached by a gospel group named The Royal Heirs to purchase his domain name and that he had first turned them down.  He did subsequently offer to sell it to them, but the group later lost interest. 

12.       The respondent claims that he has no intention of developing a web site at royalheirs.com and that he does not need that domain name; also, that he is willing to sell the name to Robin Wells.

13.       In a letter to Robin Wells dated March 25, 2000, Mr. Palloti said, inter alia, “however, we realized that we’re much too busy to be wasting time and energy in a pissing match with you.  We also realized that with our current schedule we’re not going to have time to develop our Royal Heirs site http://www.royalheirs.com) in anything like the time frame we expected, so what’s the point?  Consequently, we re-examined all our priorities and decided to not send the letter, and also to dispose of the website name.  So we’re willing to sell you the name www.royalheirs.com, if you want it.  If you’re interested, please reply by April 30th.  If we don’t hear from you by then we’ll auction off the name, and someone else will have the pleasure of dealing with you.”

CONCLUSION

The undersigned arbitrator certifies that he has acted independently and has no known conflict of interest to serve as an arbitrator in this proceeding.  Having been duly selected, and being impartial, the undersigned makes the following conclusions:

1.         The domain names Royal Heirs, ROYAL Heirs and royalheirs.com are the same                       or confusingly similar.

2.         Respondent has no rights or legitimate interests in respect to the name he has been                     using.

3.         Respondent has registered and is using the name royalheirs.com in bad faith.

DECISION

AND NOW, this 15th day of June, 2000, based upon the above findings and conclusions, and pursuant to Rule 4(i) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy, it is decided as follows:

THE UNDERSIGNED ORDERS THAT THE DOMAIN NAME, “royalheirs.com”, REGISTERED BY RESPONDENT ELEVEN ENTERTAINMENT, BE FORTHWITH TRANSFERRED TO COMPLAINANT ROBIN WELLS.

June 15, 2000                                      Honorable Richard DiSalle, Arbitrator