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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Alaska Stock LLC v. Darin Yates Studios / Darin Yates

Case No. D2004-0858

 

 

1. The Parties

The Complainant is Alaska Stock LLC, Anchorage, Alaska, United States of America, represented by Jeff Schultz, United States of America.

The Respondent is Darin Yates Studios / Darin Yates, Anchorage, Alaska, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <alaskastockimage.com> and <alaskastockphoto.com> are registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2004. On October 19, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On October 22, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an electronic version of the Complaint and the Complaint Transmittal Cover sheet on October 26, 2004. On October 28, 2004, The Center verified that the Complaint together with the electronic version of the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2004.

The Center appointed Jordan S. Weinstein as the sole panelist in this matter on December 6, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainant is the owner of two U.S. trademark registrations: Reg. No. 2,232,334 for the mark ALASKA STOCK, registered on March 16, 1999, in connection with leasing of copyrighted photographs and stock images to businesses and individuals for use in advertising, magazines, brochures and the like. An affidavit of use under Section 8 of the U.S. Trademark Act has been filed and accepted.

Complainant also owns U.S. Registration No. 2,588,033 for the mark ALASKA STOCK IMAGES, registered July 2, 2002, in connection with leasing of copyrighted photographs, motion pictures and stock images to businesses and individuals for use in advertising, magazines, brochures and the like.

Each registration claims first use of the mark in commerce as of December 15, 1990. Each registration includes a claim of acquired distinctiveness under Section 2(f) of the U.S. Trademark Act.

 

5. Parties’ Contentions

A. Complainant

Complainant is a limited liability company located in Anchorage, Alaska U.S.A. Complainant asserts it has used the name ALASKA STOCK in commerce since December 15, 1990, for leasing of copyrighted photographs and stock images to businesses and individuals for use in advertising, magazines, brochures and the like, in Class 42. Complainant claims that ALASKA STOCK IMAGES is its registered service mark, which was registered on July 2, 2002, under Reg. No. 2,588,033. Complainant asserts it has used the name ALASKA STOCK IMAGES in commerce since December 15, 1990, for leasing of copyrighted photographs and stock images to businesses and individuals for use in advertising, magazines, brochures and the like, in Class 42.

Although Complainant did not submit samples of use of its marks, it did submit a letter to Respondent on its letterhead. The letterhead clearly shows use of both marks, together with the registration symbol.

Complainant asserts that the domain names at issue are identical or confusingly similar to its registered marks. Regarding the domain name <alaskastockimage.com>, Complainant asserts that Respondent has simply singularized Complainant’s service mark ALASKA STOCK IMAGES in the domain name. Complainant asserts this one character change still results in a domain name confusingly similar to Complainant’s registered mark.

Regarding the domain name <alaskastockphoto.com>, Complainant asserts that Respondent has simply changed the word IMAGES to “photo” from the service mark ALASKA STOCK IMAGES in his domain name <alaskastockphoto.com>. Complainant asserts that because the word “photo” is a synonym for “image” this use is confusingly similar to Complainant’s registered service mark ALASKA STOCK IMAGES.

Complainant asserts that Respondent knew of Complainant’s mark ALASKA STOCK when Respondent registered both of its domain names since Complainant’s registration of ALASKA STOCK preceded Respondent’s registration of both disputed domain names. Complainant asserts Respondent knew of Complainant’s mark ALASKA STOCK IMAGES when Respondent registered <alaskastockimage.com> since Complainant’s registration ALASKA STOCK IMAGES was registered on July 2, 2002, preceding Respondent’s registration of <alaskastockimage.com> on April 3, 2003 .

Complainant asserts that Respondent has no rights or legitimate interests in the domain names because Complainant has used both ALASKA STOCK and ALASKA STOCK IMAGES in commerce since December 15, 1990, well prior to Respondent’s registration of both domain names. Complainant asserts that he has not authorized Respondent to use or register its registered service marks as domain names. Complainant asserts that Respondent’s business name is “Darin Yates Studios”, not ALASKA STOCK IMAGE or ALASKA STOCK PHOTO. Further, Complainant asserts that the name of Respondent’s photography product is “Alaskan Elements,” not ALASKA STOCK IMAGE or ALASKA STOCK PHOTO.

Complainant asserts Respondent is not making a legitimate, non-commercial or fair use of these domain names, since they point to a commercial website where the goods that are being sold are stock photos, the same type of goods being sold by Complainant at “www.alaskastock.com” as well as other domain names registered by Complainant.

Complainant asserts that Respondent has registered both domain names in order to confuse the public into thinking his business, Darin Yates Studios, is the Complainant. Complainant asserts that by doing so Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with domain names very similar to Complainant’s, and by offering the same type of product or service: stock photographs taken in Alaska.

Complainant sent Respondent a letter by certified mail on July 12, 2004, asking Respondent to cease and desist using Complainant’s registered service marks. On July 14, 2004, Complainant asserts that Respondent telephoned Complainant’s authorized representative, confirmed receipt of Complainant’s letter and asked “exactly what would you like me to do? “Respondent told Complainant’s representative that he did not want to take down the domain names and said “he had them free and clear for some time. “Complainant’s representative told Respondent he did not want to put Respondent out of business but that “we needed to protect our investment in our name.” Complainant’s representative told Respondent he would revert to Respondent on “what he expects him to do” after Respondent returned from vacation on July 27, 2004. On July 22, 2004, Complainant sent Respondent a second letter asking Respondent to transfer the domain names to Complainant. Complainant received no reply to the second letter. Complainant’s authorized representative telephoned Respondent on August 4, 2004, asking Respondent what action he planned to take. Respondent informed Complainant’s authorized representative that “he is not going to cooperate, that [Complainant] should file the complaint eluded to (sic) in the letter. “

Complainant requests that this Panel issue a decision that the domain names <alaskastockimage.com> and <alaskastockphoto.com> be transferred to Complainant.

B. Respondent

Respondent did not reply to the Complainant’s contentions. Under Paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as it considers appropriate.

 

6. Discussion and Findings

A. Applicable Policy Provisions

The Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:

(1) the domain name 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.

Policy, paragraph 4(a)

It is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.

The Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the Registrant has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) [the Registrant has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Registrant has] engaged in a pattern of such conduct; or

(iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other Online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.

Policy, paragraph 4(b). These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.

The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.”

Policy, paragraph 4(c).

B. Opinion of the Panel

1. Are the domain names identical or confusingly similar to a trademark in which Complainant has rights?

The Panel finds that the domain name <alaskastockimage.com> is substantially identical to the Complainant’s registered trademark ALASKA STOCK IMAGES, and confusingly similar to Complainant’s registered trademark ALASKA STOCK. It is well settled that the addition of a single letter pluralizing a complainant’s trademark does not create sufficient differences to avoid a likelihood of confusion. See, e.g., Memorydealers.com, Inc. v. Dave Talebi, WIPO Case No. D2004-0409 (<memorydealer.com> confusingly similar to MEMORYDEALERS.COM). Moreover, adding the generic word “photos” to Complainant’s registered trademark ALASKA STOCK in the domain name <alaskastockimage.com> does not avoid confusing similarity to Complainant’s mark. See, e.g. Dr. Ing. h. c. F. Porsche AG v. Vasily Terkin, WIPO Case No. D2003-0888 (<porsche-autoparts.com> confusingly similar to PORSCHE). The Panel finds that both disputed domain names are similar to Complainants marks.

2. Does Respondent have no rights or legitimate interests in the domain names?

Complainant has asserted that Respondent is known by the name Darin Yates Studios, and did not use the names “ALASKA STOCK IMAGE” or “ALASKA STOCK PHOTO” as a business name prior to Complaint’s registration of its trademarks. Because Respondent has defaulted, this Panel accepts that assertion is true. The Panel finds that Respondent has no rights or legitimate interests in the domain names at issue.

3. Were the domain names registered and used in bad faith?

While Complainant did not provide a sample showing how Respondent was using the domain names, the Center provided this Panel with samples of the Respondent’s web page. On it, Respondent offers for sale “stock photography of Alaska” specializing in nature, landscapes, flowers, wildlife, tourism, and corporate stock photography. Because Complainant is also offering stock photographs on its own websites, it is apparent that Respondent, by using the domain names, is intentionally attempting to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s registered marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website, or the products on that website. As such, and given the inferences which this Panel may draw as a result of Respondent’s default, this Panel finds that Respondent has registered and used the domain names in bad faith in violation of Section 4(b)(iv) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <alaskastockimage.com> and <alaskastockphoto.com> be transferred to the Complainant.


Jordan S. Weinstein
Sole Panelist

Dated: December 20, 2004

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2004/d2004-0858.html

 

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