DECISION

Azkar H. Choudhry v. Saeed Iqbal

Claim Number: FA0203000105933

PARTIES

Complainant is Azkar H. Choudhry, Houston, TX (Complainant).  Respondent is Saeed Iqbal, Fresno, CA (Respondent).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <gupshup.org>, registered with DomainSite.

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.

ROBERT T. PFEUFFER, Senior District Judge (Ret.).

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the Forum) electronically on March 18, 2002; the Forum received a hard copy of the Complaint on March 21, 2002.

On March 18, 2002, DomainSite confirmed by e-mail to the Forum that the domain name <gupshup.org> is registered with DomainSite and that the Respondent is the current registrant of the name.  DomainSite has verified that Respondent is bound by the DomainSite 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 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the Commencement Notification), setting a deadline of April 15, 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@gupshup.org by e-mail.

A timely Response was received and determined to be complete on April 15, 2002.

Thereafter, on April 22, 2002, Complainant filed an additional submission which was transmitted to the Panel along with the Original Complaint and Original Response.

On April 26, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed ROBERT T. PFEUFFER as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES= CONTENTIONS

A. Complainant:

The registration of the name GUPSHUP violates policy Paragraph 4(a) (i) in that the name is identical or confusingly similar to the name used by Complainant in the past because:                                                                                                                                                                                                                                                           

                        1.         GUPSHUP is Complainant’s common law service mark.

                        2.         Respondent knew the name it registered was identical to Complainant’s service mark.

3.         In an additional submission, Complainant states the term GUPSHUP is a viable service mark and not a generic word in the English language.      

The registration and use was in bad faith in violation of policy paragraph 4(a) (iii) because:                                                                                                                   

1. Respondent had been a member of the public that regularly used the GUPSHUP site and that Complainant had terminated the Respondent’s membership due to misconduct.                                                                                  

2. Respondent acted in bad faith when he registered the name he knew had been previously held by Complainant.                                                                                                                                                                  

3.         Actions taken by Respondent were a bad faith attempt to disrupt the business of Complainant.

3. That a violation of policy paragraph 4(b)(iv) occurred when Respondent directed customers away from Complainant and to his own site, further demonstrating his bad faith.                                                                                                                                               

            The registration is in violation of policy Paragraph 4 (a) (ii) because:             

                        1.         Respondent had no rights or legitimate interests in the domain name GUPSHUP.            

            The registration is in violation of policy Paragraph 4 (a)(ii) because:  

1. Respondent had no rights or legitimate interests in the domain name GUPSHUP.

2.         Respondent is commonly known by <desihome.org.>and not by the disputed domain name. See Policy paragraph 4(c)(ii).                                                                              

B. Respondent:

Contends he has done nothing wrong, has violated no Policy and has every right to use the name that Complainant allowed to become a lapsed domain name by his own inactions and inattention to business.  His Response is well documented as to the factual and legal allegations made in the Complaint.  He attached to his Response addendums 1 through 5 including a statement styled Affidavit attached as Addendum 4, but which is not supported by an oath.  In making this decision the writer has carefully examined the content of each of these Addendums.

C. Additional Submissions

Complainant has filed additional submissions which include numerous attachments of evidence A through M which he contends establish his rights to the domain name in question. Each item attached to the Additional Response has been carefully reviewed to determine if they have any bearing on the disputed facts in the case, and whether, as a matter of law, they support his Complaint. In addition, Complainant asserts that Respondent has not raised any issue that was not fully and effectively addressed in the petition nor has he supplied any evidence of false statements contained therein.

FINDINGS

            Complainant contends that GUPSHUP is their common law service mark.  See British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names and applying the UDRP to unregistered trademarks and service marks); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate exclusive rights, but only that Complainant has a bona fide basis for making the complaint in the first place); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (An account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under common law”).

The domain name <gupshup.org> is identical to Complainant’s mark.  See ViewSonic Corp. V. Informer Assoc. Inc., D2000-0852 (WIPO Sept. 6, 2000) (finding that the domain names <viewsonic.net> and <viewsonic.org> are identical to the Complainant’s VIEWSONIC mark).

            Complainant further asserts in the additional submission that GUPSHUP is a viable service mark and not a generic word in the English language.  See Limco, Inc. v Rarenames, FA 99693 (Nat. Arb. Forum Nov. 27, 2001) (finding that rather than just claiming that a term is generic, Respondent should provide further evidence of genericism, considering "words such as 'crew', 'playboy', 'quicktime' and 'scholastic' have been granted trademark registrations that have been protected in domain dispute cases").

Rights and Legitimate Interests   Policy & 4(a)(ii).

                                               

Complainant contends to be the former registrant of the disputed domain name.  See American Anti-Vivisection Soc’y v. "Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name).

Complainant contends that Respondent is diverting his customers to Respondent=s website. Such act does not provide Respondent with rights or legitimate interests under Policy & 4(a)(ii). Using Complainant’s mark to divert customers is not a bona fide offering of goods under & 4(c)(i) nor is it a noncommercial or fair use under Policy & 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

            Additionally, Complainant contends that Respondent is commonly known by <desihome.org> not by the disputed domain name under Policy & 4(c)(ii).  See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>.

Registration and Use in Bad Faith     Policy paragraph 4(a)(iii).                                                                      

Complainant contends that Respondent acted in bad faith by registering his previously held domain name, which lapsed by accident.  See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of Complainant’s failure to renew a domain name).

Complainant’s evidence supports a finding that Respondent acted in bad faith pursuant to Policy Paragraph 4(b)(iv) by directing his customers to Respondent’s own site. See Drs. Foster & Smith, Inc. v Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking Complainant=s site to its own website for commercial gain).

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.

FINDINGS

Identical and/or Confusingly Similar

The domain name is identical to the Complainant’s service mark GUPSHUP.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect to the domain name.

Registration and Use in Bad Faith

The Respondent is found to have registered and used the domain name in bad faith.

DECISION

The domain name registration for <gupshup.org> shall be transferred to Complainant forthwith.

ROBERT T. PFEUFFER, Sole panelist

Dated: May 3, 2002

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