DECISION

YesVideo Inc. v. Robert  Popovic

Claim Number: FA0205000113290

PARTIES

Complainant is YesVideo Inc., San Jose, CA, USA (“Complainant”).  Respondent is Robert Popovic, Vaxjo, SWEDEN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yesdvd.com>, registered with Verisign - Network Solutions, Inc.

PANEL

On July 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.  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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 7, 2002; the Forum received a hard copy of the Complaint on May 24, 2002.

On May 10, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <yesdvd.com> is registered with Verisign - Network Solutions, Inc. and that Respondent is the current registrant of the name.  Verisign - Network Solutions, Inc. has verified that Respondent is bound by the Verisign - Network Solutions, 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 June 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 24, 2002 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@yesdvd.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 Forum transmitted to the parties a Notification of Respondent Default.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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

1. Respondent’s <yesdvd.com> domain name is identical to Complainant’s common law mark.

2. Respondent does not have any rights or legitimate interests in the <yesdvd.com> domain name.

3. Respondent registered and used the <yesdvd.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant filed a trademark application with the U.S. Patent and Trademark Office (“USPTO”) for its YESDVD mark on November 21, 2001. Complainant has used the YESDVD common law mark since November 21, 2001 to refer to its service of converting videotapes into DVD format. Complainant’s YESDVD common law mark has been used in local and national advertising as well as on its packaging. Since November 2001, Complainant has created over 25,000 packaged products bearing the YESDVD mark. Complainant has invested “hundreds of thousands of dollars” in promoting its products.

Respondent registered the disputed domain name on December 8, 1999. Complainant’s investigation revealed that Respondent’s domain name previously directed Internet users to <greatdomains.com>, a website dedicated to marketing Internet domain names. However, Respondent’s disputed domain name presently directs users to Complainant’s <yesvideo.com> website. Respondent cloaks the URL to appear as though users are still at the <yesdvd.com> website, although as stated, they have been redirected to Complainant’s <yesvideo.com> location.

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 the 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 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; and

(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 asserts common law rights in the YESDVD mark. Complainant has filed a trademark application with the USPTO and has subsequently continually used the YESDVD mark in its service of converting data to DVD format. 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.” See McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).

Complainant has made a reasonable assertion that it has common law rights in YESDVD. Furthermore, this assertion has not been refuted because Respondent has failed to respond, and therefore the Panel may accept Complainant’s assertion to be true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent’s <yesdvd.com> domain name is identical to Complainant’s YESDVD common law mark. The disputed domain name emulates Complainant’s mark in form and spelling, thereby rendering Respondent’s domain name identical. Respondent’s disputed domain name deviates from Complainant’s mark only by the addition of the gTLD “.com” which is insignificant when conducting an “identical” inquiry under Policy ¶ 4(a)(i). 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has not submitted a Response in this matter. Therefore, the Panel may presume that Respondent has no rights or legitimate interests in respect of the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). As previously stated, Respondent’s failure to respond allows all reasonable inferences made by Complainant to be deemed true. See 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”).

Respondent’s disputed domain name was registered on December 8, 1999. Complainant’s investigation, which spanned from November 2001 until the present, revealed that Respondent has made no use of the domain name in question, apart from attaching it to <greatdomains.com>. Although Respondent has held the registration for <yesdvd.com> for over three years, it has failed to develop any function or suggest any demonstrable purpose for the domain name. Respondent’s passive holding of the domain name does not constitute a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). Respondent has also failed to use the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of the Policy”); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (finding that despite suffering significant injuries as a result of an accident, “the Panel would not only need to excuse the Respondent’s past 2+ year delay but also sanction that delay to extend for an indefinite amount of time into the future. This the Panel will not do”).

There is no evidence before the Panel that suggests Respondent is commonly known as <yesdvd.com>, nor is there an obvious connection between Respondent and the domain name. Complainant’s investigation has revealed that Respondent has made no use of the domain name that would correspond with an identity, besides redirecting users to <greatdomains.com>. Therefore, Respondent has failed to demonstrate rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

In order for Complainant to succeed under the ICANN Policy it must establish that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

The WHOIS information available to the Panel states that Respondent originally registered the disputed domain name on December 8, 1999. Complainant’s YESDVD mark was not applied for until November 21, 2001, and, perhaps more importantly, Complainant’s business did not begin using the YESDVD mark until that same time. Complainant states in its Complainant, “These factors lead us to believe that this domain was registered in bad faith, perhaps in the hopes that a legitimate DVD company would buy the domain. . .” However, bad faith registration cannot be established by referencing Respondent’s general intentions when the domain name was registered nearly two years before Complainant ever used the mark. Therefore, in relation to this Complainant, Respondent could not have registered the domain name in bad faith because Complainant’s mark and business did not exist. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“We are of the unanimous view that the trademark must predate the domain name”); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding that it is impossible for Respondent to register disputed domain name in bad faith if the Complainant's company did not exist at the time of registration).

The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be DENIED.

Accordingly, it is Ordered that the Complaint be DISMISSED.

James P. Buchele, Panelist

Dated: July 15, 2002

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