WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lindy Fralin Pickups, L.L.C. / Lindy Fralin v. Lindy Fralin
Case No. D2007-0519
1. The Parties
The Complainants are Lindy Fralin Pickups, L.L.C./Lindy Fralin, Richmond, Virginia, United States of America, represented by Hirschler Fleischer, P.C., United States of America.
The Respondent and listed registrant of record for the disputed domain name is “Lindy Fralin”, Las Vegas, Nevada, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lindyfralin.com> (“the Domain Name”) is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2007. On April 10, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 18, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that “Lindy Fralin” is listed as the registrant and providing the contact details for the administrative and technical contact, both of which included an email address for “elizabethheart@[email address]”. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on April 18, 2007. The Center verified that the Complaint together with the amendment to 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 May 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2007.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on June 8, 2007. 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 Lindy Fralin is the founder and managing member of Complainant corporation Lindy Fralin Pickups, L.L.C. Complainants manufacture custom guitar pickups.
The Complaint is based on the mark LINDY FRALIN (“the Mark”), which Complainants claim to have used continuously in commerce in connection with the sale of guitar pickups since the early 1990s. Complainants allege that the Mark has recently been licensed for use and is being used in connection with the sale of a guitar amplifier manufactured by a company in Maryland and marketed as the “LINDY FRALIN MODEL”. Complainants claim that they have established goodwill in the Mark by, among other things, guitar-focused publications.
An application to federally register the Mark is pending with the U.S. Patent and Trademark Office (“PTO”).
5. Parties’ Contentions
The Domain Name <lindyfralin.com> is confusingly similar to the marks LINDY FRALIN, LINDY FRALIN PICKUPS, and FRALIN PICKUPS in that <lindyfralin.com> is the same as the LINDY FRALIN mark and for all purposes related to consumer confusion, is the functional equivalent of LINDY FRALIN PICKUPS. Respondent’s registration and use of the Domain Name has resulted in actual consumer confusion, the effects of which have been amplified by the Respondent’s use and mis-direction through use of the Domain Name.
Respondent has no rights or legitimate interests in the Domain Name because her use of it has included use to re-direct visitors to third parties who make and sell guitar pickups in competition with Complainants. At the time of this Complaint and for several months prior, Respondent has used the Domain Name to make false and disparaging remarks about Lindy Fralin, based on factual statements that are not true and known to Respondent not to be true. Such remarks tarnish the Mark.
The Domain Name has been registered and is being used in bad faith due to the reasons stated above, as well as its use by Respondent to demand a $10,000 ransom payment for it from Complainants. This demand, combined with the lack of any legitimate use of the Domain Name establishes that the primary purpose of Respondent’s registration was to sell it to Complainants, who own the rights to the Mark.
The $10,000 demand for transfer of the Domain Name was communicated by telephone from Respondent to Mr. Fralin.
Respondent Elizabeth Heart is an individual who has no intention of using the Domain Name for any valid business purpose. Her contact information from pre-Complaint interaction is an address and phone number in Las Vegas, Nevada. Upon information and belief, Elizabeth Heart changed her name for purposes of the registration information, in the days or weeks leading up to the filing of this proceeding, in an attempt to confuse or delay this proceeding and the return of the <lindyfralin.com> domain name to Complainants. The current registrant of the Domain Name is “Lindy Fralin” but the contact information (street address, email address containing Ms. Heart’s name, and telephone number) is the same as Respondent Elizabeth Heart. Adoption of the new name (Lindy Fralin) is further deceptive behavior. Internet searches of various telephone directories show no listings for anyone with the last name “Fralin” in Las Vegas.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004 (February 16, 2000). Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainants and to draw adverse inferences of fact against Respondent. Nonetheless, Paragraph 4(a) of the Policy requires that the Complainants must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, do Complainants have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.1
Because Complainants do not own a trademark registration, they must establish common law rights to the trademark LINDY FRALIN by showing either that the mark is inherently distinctive or that it has acquired secondary meaning through which the relevant public associates Complainants as the source of a product or service. See Tightrope Media Sys. Corp. v. DomainCollection.com, WIPO Case No. D2006-0446 (June 2, 2006). Complainants have not argued, nor have they proffered any evidence to show, that the Mark is inherently distinctive.
While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce (such as the situation here), a complainant may be able to establish common law trademark rights in the name. Here, however, Complainants have submitted meager evidence of secondary meaning to establish common law trademark rights in the LINDY FRALIN mark. Evidence sufficient to show that the public associates LINDY FRALIN with Complainants or its goods or services would include: the length of time Complainants have been using the Mark2 and the amount of sales for that time period, the nature and extent of advertising, consumer surveys and/or the extent of media recognition.
The Panel declines to specifically find an absence of trademark rights for two reasons. First, because Complainants must prevail on all three factors in order to win transfer of the Domain Name, and because of the Panel’s ruling on bad faith (below), it is not necessary for the Panel to decide this issue. See Tightrope Media Sys. Corp. v. DomainCollection.com, WIPO Case No. D2006-0446 (June 2, 2006). Second, whether Complainants have established secondary meaning in the Mark will be addressed by the PTO in connection with its examination of Complainants’ pending trademark application. Given that this issue will be decided by the PTO, the Panel would not want a gratuitous finding regarding the existence of trademark rights to have any impact on the PTO’s consideration of the application, or to be cited against Complainants in any other proceedings. Cf. Visual Gis Engineering S.L. v. Nitin Tripathi, WIPO Case No. D2006-0079 at n.1 (in the event of other proceedings, decisions in UDRP cases should be of no effect since the UDRP decision is based on a limited factual record and is intended to resolve only the specific dispute; moreover, other proceedings likely would be conducted under different procedural rules and substantive laws). “Rather, if the existence of trademark rights is relevant in any other contexts, that important issue should be decided only after the parties have had a better opportunity to litigate the issue, including, if appropriate, through discovery, cross-examination, and credibility determinations.” See Tightrope Media Sys. Corp. v. DomainCollection.com, WIPO Case No. D2006-0446 (June 2, 2006).
B. Rights or Legitimate Interests
Because the Panel has determined that Complainants have failed to meet their burden of proof as to the third requirement, the Panel does not reach this issue.3
C. Registered and Used in Bad Faith
Despite some conduct by Respondent4 that may call into question what is behind her registration and use of the Domain Name, Complainants have failed to convincingly argue let alone prove that Respondent registered and is using the Domain Name in bad faith as required by the Policy. Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name by Respondent in bad faith:
“(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Complainants assert that Respondent registered and is using the Domain Name in bad faith because, according to Complainants, Respondent has offered to sell the Domain Name to Complainants for $10,000 and because Respondent has no rights or legitimate interests in the Domain Name. However, Complainants’ have provided no persuasive evidence for either assertion. Although circumstances indicating that Respondent registered the Domain Name primarily for the purpose of selling it to Complainants or one of their competitors would be considered evidence of bad faith, to establish such bad faith, Complainants would have to show that Respondent was aware of Complainants’ trademark rights when Respondent registered the Domain Name. See Tightrope Media Sys. Corp. v. DomainCollection.com, WIPO Case No. D2006-0446 (June 2, 2006); see also, Tan Factory c/o Jeff D’Alessio v. DefaultData.com c/o Brian Wick, FA 327674 (Nat Arb. Forum, November 3, 2004). Even if Complainants could establish that they had rights in the Mark at the time Respondent registered the Domain Name, Complainants have not shown by a preponderance of the evidence that Respondent was aware of Complainants’ rights (or indeed even likely rights) in the Mark. As mentioned above with regard to the first factor, the paucity of evidence in the record regarding secondary meaning does not support an inference that Respondent was aware of Complainants’ rights in the Mark. If Respondent was unaware of Complainants’ rights, and if Respondent did have the right to register the Domain Name, then Respondent’s offer to sell the Domain Name would not by itself constitute bad faith. See Tightrope Media Sys. Corp. v. DomainCollection.com, WIPO Case No. D2006-0446 (June 2, 2006); Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654 (parties have right to sell assets, including domain name registrations, that have been legitimately registered without other indicia of bad faith). Complainants assert that Respondent has used the domain name to make false and disparaging remarks about Complainants, and that such remarks tarnish Complainants’ mark. However, no evidence of these assertions has been provided other than a copy of the current content of Respondent’s website. While certain statements on the website do indeed appear critical of Complainants and their claimed conduct, it is not clear to the Panel on the limited evidence provided by Complainants that these are necessarily sufficient to establish Respondent’s bad faith.
Furthermore, Complainants have not proffered evidence to show that Respondent registered the Domain Name primarily for the purpose of selling it to Complainants for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. While Complainants claim that Respondent offered to sell the Domain Name to them for $10,000, the only evidence in the record regarding what Respondent wants in order to relinquish the Domain Name is the page from Respondent’s website stating: “If anyone else out there is interested in this domain name, we are willing to GIVE IT to the first person, group, or company who will make a decent donation to the Susan G. Komen Foundation. This message will be taken down as soon as the domain name has a new owner. PS: For more information about how you can help in the fight against breast cancer, go to http://www.susangkomen.com.” Whatever the veracity of this statement may be, the Panel does not consider that it constitutes sufficient evidence to conclude that Respondent registered the Domain Name with the bad faith required under the Policy, and in the circumstances the Panel declines to make such a finding.
For all the foregoing reasons, the Complaint is denied.
Harrie R. Samaras
Date: June 22, 2007
1 It bears noting that Complainants have asserted that Respondent’s registration and use of the Domain Name has resulted in actual consumer confusion. The Panel could not find any evidence of this in the record.
2 Complainants allege they have been continuously using the Mark since the early 1990s, but they did not proffer any evidence to show such continuous use.
3 It bears noting that Complainants have alleged Respondent does not have rights or legitimate interests in the Domain Name because her use of it has included use to re-direct visitors to third parties who make and sell guitar pickups in competition with Complainants. The Panel could find no evidence of this in the record.
4 It appears that Respondent changed her name on the Domain Name registration records from Elizabeth Hart to Lindy Fralin, leaving her other contact information intact. Furthermore, in addition to other statements on her website, Respondent states: “You [Lindy Fralin] are not the only person named Lindy Fralin in the world, although you are probably the biggest asshole with that name. We legally won the domain name in a public auction, and we are legally entitled to keep, use, or sell it as we see fit.”