Industry Publications, LLC v. Industry Magazine
Claim Number: FA0708001060670
Complainant is Industry Publications, LLC (“Complainant”), represented by Charles
F. Morgan, Esquire of Astrachan Gunst & Thomas, PC, 217
E. Redwood Street, Suite 2100,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <industrymagazine.com>, registered with Network Solutions, Inc.
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.
M. Kelly Tillery, Esquire as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 13, 2007.
On August 10, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <industrymagazine.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the 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 August 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 10, 2007 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on September 10, 2007.
A timely Additional Submission from Complainant was received and determined to be complete on September 13, 2007
A timely Additional Submission from Respondent was received and determined to be complete on September 18, 2007.
On September 20, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant contends that:
Goods: “magazines relating to trends in fashion, modeling, culture, movies, theatre, acting, music, musicians, sports, travel and entertainment.”
3) from 2004 until April 24, 2007, it operated a website at <industrymagazine.com> for the benefit of its online customers and Internet users who may be interested in its magazine titled “Industry;”
4) the Registrar for <industrymagazine.com> was DomainDiscover with whom it renewed the registration for the domain each year beginning in 2004;
5) On April 24, 2007, it was informed that the Name Servers for <industrymagazine.com> were no longer pointing to its servers but instead to NS45.WORLDNIC.COM and NS46.WORLDNIC.COM;
6) On April 24, 2007, Alec Defrawy, telephoned its offices and demanded payment for the domain name <industrymagazine.com>;
7) Defrawy improperly registered its domain with Internet Solutions in the name of “Industry Magazine.”
Respondent contends that:
1) During the calendar years 2001-2002, Alec El-Difrawi, together with Mr. Armand Kulpa, co-founded a magazine, entitled “Industry” magazine” and El-Difrawi registered the Domain Name <industrymagazine.com> on May 3, 2002;
2) the original Registrar was DomainDiscover with El-Difrawi listed as the Administrative Contact and Billing Contact and Mr. Kulpa listed as a Technical Contact;
3) El-Difrawi utilized the disputed domain name in operating Industry magazine;
4) El-Difrawi never transferred the right to the use of, or ownership of, the Domain Name to any individual or entity;
5) during the calendar year 2005, Mr. Kulpa sold the magazine interest to Complainant without the knowledge or consent of Respondent El-Difrawi;
6) he notified Complainant of his claims to the magazine assets and to the disputed domain name;
7) Difrawi paid all registration and renewal fees from the original date of registration until approximately the calendar year 2006. Thereafter, without notice to Respondent El-Difrawi, Complainant paid the renewal fee for the disputed domain name;
8) in April 2007, Difrawi finally was successful in requiring the Registrar to honor his legal title to the disputed domain name and he thereafter transferred the domain name to a different Registrar, Network Solutions, and required the Registrar to “point” the domain name to El-Difrawi’s designated server;
9) Respondent did not establish another active website utilizing his domain name, rather allowing the site to remain under construction pending a resolution of the dispute over legal title to the magazine and the disputed domain name;
10) Complainant’s Trademark was registered September 19, 2006, many years after Respondent registered the disputed domain name and the trademark is generic and does not have an established secondary meaning in the community relating to Complainant’s mark;
11) Complainant was not incorporated until November 12, 2003, AFTER El-Difrawi registered the Domain Name. Industry Publications, LLC did not exist as a legal entity doing business until November 12, 2003.
C. Additional Submissions
1) Claimant further contends that:
2) Respondent further contends that:
1) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is identical or confusingly similar to a Trademark in which Complainant has rights.
2) Complainant has not met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3) Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name has been registered and is being used in bad faith.
It shall be instructive to review a Chronology of the clearly undisputed events.
5/3/02 - Domain Name created <industrymagazine.com>
Registrar: DomainsDiscover; Registrant: Industry Magazine
10/3/02 - Complainant Files “Intent to Use” Application with USPTO for “INDUSTRY” Mark
7/22/03 - Armand
F. Kulpa files Fictitious Name Registration for “INDUSTRY MAGAZINE” with State
11/12/03 - Industry Publications, LLC Incorporated
6/04 - Complainant’s First Uses “INDUSTRY” in Commerce
9/19/06 - USPTO Registration for “INDUSTRY” Trademark Issues to Complainant (Reg. No. 3,145,837)
4/24/07 - Domain Name “Updated” <industrymagazine.com>
Registrar: Network Solutions, Inc.; Registrant: Industry Magazine
This case is troubling in that Network Solutions, Inc. identifies “Industry Magazine” as the Registrant and thus Respondent therein, but all filings herein on behalf of said Respondent are by an individual “Ayman El-Difrawi a/k/a Alec Dufrawy”, who, in an Affidavit, claims to have at one time been a “majority interest holder” in a partnership with “Armand Kulpa and others” which “founded Industry Magazine” in 2002.
The website <domaintools.com> provides a convenient “Domain History” of Domain Names. Although the parties have not included in the record copies of documents from <domaintools.com> regarding the Domain Name in question, the Panel may take judicial notice of such histories.
The history of this Domain Name reflects that as of April 21, 2007, the Registrant for the Domain Name was “Industry Magazine” with an Administrative Contact of “Dufrawy Consulting/Dr. A.A. Dufrawy and a Technical Contact, Zone Contact of “Industry Magazine – Armand Kulpa.” The history indicates that the Domain Name was created on May 3, 2002 and that the Registrar therefore was Domaindiscover.
The History next reflects that on April 24, 2007, the Domain Name Registrar was changed to Network Solutions, LLC with the Registrant still “Industry Magazine” and the Administrative, Technical Contact: Industry Magazine – H45EW9CR42B@networksolutionsprivate registration.com. No further name or address for the Registrant Administrative Contact or Technical Contact are recorded. As this was a new Domain Name Registrar, the Record indicates that the Domain Name was “created” on that date, April 24, 2007. The Domain Name Servers for the Domain Name when the Registrar was Domain Discover were: NS1.LNHI.net and NS2.LNHI.net. The new Registration with Network Solutions, LLC indicates the Domain Servers are: NS45-worldnic.com 184.108.40.206 and NS4-worldnic.com 220.127.116.11.
Neither the <domaintools.com> history of the Domain Name nor any submission by the parties herein sufficiently explain precisely how or why the Domain Name was transferred from Registrar Domain Discover to Registrar Network Solutions, LLC and how the Administrative and Technical Contacts were also changed.
Thus, based upon this record, this Panel is unable to determine whether as claimed, “Ayman El-Dufrawy a/k/a Alec Dufrawy” is, in fact, the Respondent or a representative of Respondent “Industry Magazine” which is not identified as any particular type of legal entity nor is this Panel able to determine how the Registration was changed and if same was proper under ICANN Procedures and/or other applicable law.
To a great extent, this dispute is in reality one over the legal title to the Domain Name and is a matter of contract and/or tort law under Florida (or other) State Law between the parties herein and/or others, such as Mr. Kulpa, Ralph Edward Bell, Domaindiscover and/or Network Solutions, Inc. See Love v. Barnett, FA 944826 (Nat. Arb. Forum, May 14, 2007); Hachette Filipacci Media US, Inc. v. Urthere Prods., Inc., D2002-0143 (WIPO, May 30, 2002); Frazer Winery, LLC v. Hernandez, FA 841081 (Nat. Arb. Forum, Jan. 2, 2007). This Panel is not empowered to decide legal title “ownership” of this Domain Name, only to whom it should be registered and it can only be transferred from its current Registrant, the Respondent or cancelled if Complainant proves all three prongs of the UDRP Policy by a preponderance of the credible, admissible evidence.
Under all of these circumstances, and considering the real nature of this dispute, this Panel is unable to grant the affirmative relief requested by Complainant as there are simply too many legal and/or factual issues which are far beyond the ken of an ICANN Domain Name Arbitration Panel.
Complainant’s initial failure to disclose the history of this dispute is somewhat disturbing and telling. Complainant’s failure to submit Affidavits from Matthew Gull, Armand F. Kulpa or any other and/or any documentation of the alleged sale of the business from Mr. Kulpa to Complainant makes finding in favor of Complainant on the Second and Third prongs of the UDRP Policy difficult, if not impossible.
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.
asserts rights in the INDUSTRY mark through ownership of a Trademark Registration
with the USPTO (Reg. No. 3,145,837 issued September 19, 2006, filed October 3,
2002). The Panel finds that
Complainant’s Trademark Registration sufficiently establishes Complainant’s
rights in the mark for the purposes of Policy ¶ 4(a)(i).
See Reebok Int’l Ltd. v.
Complainant asserts that the <industrymagazine.com> Domain Name is confusingly similar to Complainant’s INDUSTRY mark as the disputed domain name contains Complainant’s mark in its entirety with the addition of the common term “magazine,” which has an obvious relationship to Complainant’s business, as well as the generic top-level domain (“gTLD”) “.com.” These alterations to Complainant’s mark do not adequately distinguish the disputed domain name under Policy ¶ 4(a)(i). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (<hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
Under these circumstances, the Panel finds that the Domain Name <industrymagazine.com> is confusingly similar to Complainant’s “Industry” Mark and thus the Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is confusingly similar to a Trademark in which Complainant has rights.
By way of Affidavits, an apparent representative of Respondent, has submitted sufficient evidence to establish that Respondent at least had some involvement in the use of the Domain Name for a legitimate purpose as early as May of 2002, before Complainant filed an “Intent to Use” Application with the USPTO on October 3, 2002 and long before Complainant’s acknowledged First Use of the Mark in commerce in June of 2004. In light of the dispute it is also not unreasonable or bad faith for Respondent not to use the site actively until resolution. Under these circumstances, Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent has no rights or legitimate interest in respect to the Domain Name.
Respondent, through Affidavits, has established that it or representatives acting on its behalf, registered the Domain Name originally on May 3, 2002 in good faith for use in commerce in connection with a magazine. Complainant has produced no evidence to indicate that the original Registration was in bad faith nor any sufficient, credible evidence to establish that the current or any past use was done in bad faith. While there is some evidence indicating that there were discussions regarding the sale of the Domain Name, such exchanges between parties who were apparently at one time in business together and also apparently have a dispute over the ownership of this asset of the business or the business itself, do not in and of themselves establish bad faith use or registration.
As indicated previously above, this is clearly really a commercial dispute between former partners over the ownership of one asset of a past or existing business and it is simply not the type of dispute that this Panel is empowered to resolve.
The Parties best take this dispute to litigation in another, more appropriate forum.
Complainant has failed to establish all three elements required under the ICANN Policy. The Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that Complainant’s Complaint is DISMISSED.
M. Kelly Tillery,
Dated: October 4, 2007
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