WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Federated Western Properties, Inc. v. Mr. Faton Brezica aka "Its Me Haraqi" and "Its Me Pr"
Case No. D2002-0083
1. The Parties
The Complainant is Federated Western Properties, Inc., of 4441 South Polaris Avenue, Las Vegas, Nevada, United States of America, represented by Anthony F. LoCicero, Esq. and Mark J. Rosenberg, Esq., of Amster, Rothstein & Ebenstein of New York City.
The Respondent is Mr. Faton Brezica, of 40 Merselis Avenue, Clifton, New Jersey 07011, United States of America aka "Its Me Haraqi" and "Its Me Pr" of Ulpiana C-7, Prishtine, Kosove 38000, Albania.
2. The Domain Name and Registrar
The disputed domain name is <macys.biz>.
The Registrar is Intercosmos Media Group, Inc. dba directNIC.com, of New Orleans.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint, which named as Respondent "Its Me Haraqi" of Macys, Ulpiana C-7, Prishtine, Kosove 38000, Albania, was received by the Center by email on January 26, 2002, and in hard copy on January 28, 2002. The Complaint was acknowledged on January 29, 2002. That day registration details were sought from and provided by the Registrar, which stated that the disputed domain name was registered with it on November 7, 2001; that it is currently registered in the name "Its Me Pr" of Macys, Ulpiana C-7, Prishtine, Kosove 38000, Albania; that the Whois database was last updated on the morning of January 29, 2002; that the Policy applies to the disputed domain name and that the language of the Registration Agreement is English.
On January 31, 2002, the Center invited the Complainant to amend the Complaint in light of the information provided by the Registrar. On February 5, 2002, the Complainant filed an amendment to the Complaint naming both Its Me Haraqi and Its Me Pr as Respondents and asserting, on information and belief, that neither name is the name of an actual person and that both are aliases for Mr. Faton Breznica, in whose name the disputed domain name was initially registered.
On February 7, 2002, the Center satisfied itself that the Complaint complied with all formal requirements (including payment of the prescribed fee) and that day formally dispatched copies of the Complaint and its amendment by post/courier (with enclosures) addressed to the Respondent at the address set out in paragraph 1 above and to Its Me Haraqi and Its Me Pr at the address in Albania as recorded with the Registrar and by email to all three addressees (without attachments). The Center included with that material a letter dated February 7, 2002, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was February 27, 2002. A Response was filed by email on February 26, 2002, and in hard copy on March 1, 2002. Its receipt was acknowledged on February 27, 2002. The Response was made by Mr. Faton Brezica. It stated that he registered the disputed domain name in his name; that he changed the registrant information not to make it appear that the registrant is someone else and that he was unaware the registrant had to be the actual name of a living person, a mistake he would correct.
The Complainant elected to have the case decided by a single-member Administrative Panel ("the Panel") and on March 5, 2002, the Center notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On March 5, 2002, the Center transmitted the case file to the Panel and notified the parties of the projected decision date of March 19, 2002.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; the Response was filed within the time specified in the Rules and the Panel was properly constituted.
Although Mr.Brezica is not named as Respondent in the amended Complaint, the Panel considers it appropriate, having regard to the circumstances set out above, to regard him as the Respondent and for him to be so named in the title to this determination.
The language of the proceedings was English, being the language of the Registration Agreement.
4. Factual Background
Since 1858, Complainant, its licensees and predecessors-in-interest have operated department stores and sold apparel, accessories and related goods under the trademark MACYíS, a mark that is world famous, not merely in connection with department stores but also in connection with the Macyís Thanksgiving Day Parade and the Macyís 4th of July Fireworks show. The mark has been registered in the United States since 1910, and has also acquired secondary meaning, denoting the goods and services of Complainant.
On November 7, 2001, Respondent, a 23 year old Albanian national, who emigrated from Kosova to the United States in 1997, registered the disputed domain name <macys.biz> in his own name, stating the Registrantís organization as "Macys".
After Complainant contacted Respondent about the disputed domain name in December 2001, Respondent changed the registrant name to Its Me Haraqi. After the filing of the Complaint, Respondent again changed the registrant name to Its Me Pr. Other changes were made on each of those occasions to the registrant, administrative, billing and technical contact information. However, the organization of the registrant continued to be stated as "Macys".
5. Partiesí Contentions
Complainant requests the Panel to direct that <macys.biz> be transferred to the Complainant upon the following legal grounds:
Identity or confusing similarity
The disputed domain name is identical or confusingly similar to Complainant's famous MACYíS trademark and incorporates it in its entirety.
Respondent has no rights to the name or the mark MACYíS despite stating that the registrant organization was Macys. He has no trademark registrations comprising or incorporating that word and is not commonly known by any such name.
Respondent registered the disputed domain name long after the MACYíS mark became famous. He falsely represented his organization was Macys, in violation of paragraph 2 of the Policy. Respondent must have intended to attract Internauts to his web site, for commercial gain, by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation or endorsement of his web site.
As at December 20, 2001, the disputed domain name linked to a web page stating "For Sale" and giving the Respondentís name and contact details. Having advertised the disputed domain name for sale, Respondent subsequently removed the advertisement from the site and changed the registration information in an attempt to conceal the prior attempt to sell it and to hide from Complainant.
B. The Respondent
Throughout my residency in the U.S., I have made relationships with many Albanian youth that are struggling in trying to adjust to American culture. Many of these individuals feel isolated and alone. They have difficulty coping with day-to-day problems. They also have difficulty in finding other Albanians who speak their language and can offer them advice on living in the U.S., as well as offer advice on other personal problems unique to Albanian immigrants. Many Albanian youth are not aware that the Albanian community in the U.S. and elsewhere is very supportive. Just as important, new Albanian immigrants do not realize that many individuals have experienced the same problems in the U.S. I recall my difficult experiences when I first arrived in the U.S., and how I wished there existed a place to meet other Albanian youth to share problems and help each other.
Over the years, I have been recognized by others as an expert in the Albanian language and culture. In fact, in August and September 2001, the U.S. Government hired me as a lecturer on Albanian language and culture. I have taught many government employees about the Albanian people, their ways and their heritage. I also lectured on the Albanian language and its use in day-to-day conversations by Albanian nationals. Also, while participating in this project, I reenacted day-to-day life styles of Albanians. This was done as a training session for U.S. and foreign officials stationed in Kosova to maintain peace between the Serbs and Albanians.
I purchased the disputed domain name with plans to establish a meeting website for Albanian youth. I have been working on this project for some time now, and am very qualified to pursue such a project. My experiences in lecturing the U.S. government and foreign officials on Albanian culture establishes that I have the necessary skills and relationships to create such a website and make it successful.
The reason I chose the domain name "macys.biz" was because mac translates into the word cat, or small cat, in the Albanian language. The Y and S are initials for two other Albanian words; Y for (Ylberi) which means rainbow and S for (simpatia) which means sympathy. Together, the phrase symbolizes a lost cat finding hope at the end of the rainbow. Here, the lost cat is the Albanian immigrant looking for family and friends in the U.S. When I decided to use the disputed domain name, it was solely for establishing a non-profit website for Albanian youth, which will provide them access to other Albanians to share problems and provide assistance to one another. A draft of the welcome page for my website is attached.
I am not currently using the disputed domain name, and I will not use it until the pending matter is resolved. Also, I will not include any information on my website until this matter is resolved.
My registering of the disputed domain name was not done in bad faith. Also, I never attempted to deceive anyone as to the true ownership of this domain name. The Complainantís representatives wrongfully accuse me of changing the registrant information to hide from them. This is untrue. The registrant information was changed in late December 2001 and January 2002 (i.e., after Complainantís attorney already successfully served the complaint on me, which I accepted). I changed the information for personal reasons, not to deceive anyone or to make it appear that the registrant is someone else. Otherwise I would not have listed my personal telephone number in the U. S. and my home address in Albania as contact information.
More importantly, as of December 2001, after I received the Complaint but before I changed the registrant information, Complainantís counsel, Mr. Rosenberg already had my personal telephone number and my home address. In fact, in December 2001, I spoke to Mr. Rosenberg on the telephone. At that time, I told him my name and that I owned the disputed domain name. I also confirmed that I had received the Complaint from him. Further, throughout January 2002, Mr. Rosenberg was in regular contact with my attorney about this pending matter.
If I were trying to deceive or avoid Complainant or Mr. Rosenberg, I would not have listed my personal telephone number and home address in the first place. Also, I would not have acknowledged my ownership of the disputed domain name when I spoke to Mr. Rosenberg in December 2001. Further, if I were trying to avoid Complainant or Mr. Rosenberg, why would I ask my attorney to contact Mr. Rosenberg on my behalf? Complainantís accusations are false.
Furthermore, I am disappointed with the way Complainantís representatives have falsely accused me of other wrongdoings. Specifically, I understand that Mr. Rosenberg told my attorney that I used Complainantís business information to buy and register the disputed domain name. If what Mr. Rosenberg said is true, that would mean that I intentionally misrepresented myself as associated with Complainant when I registered the disputed domain name. This, of course, is untrue. There exists no evidence of such conduct. I am appalled with this baseless accusation.
I purchased the domain legally from DirectNic.com with my own accurate information. Up until now, I was not aware that the registrant of a domain name had to be the actual name of a living person. This was an honest mistake, which I will correct. At the time, I believed that the name of the website or any other name was an appropriate registrantís name, so long as the telephone number, home address and e-mail address were accurate. In any event, the telephone numbers, addresses and e-mail addresses that I listed were accurate.
To my knowledge, when "dot biz" domain names became available, all major companies had an opportunity to register their own names. Also, to my knowledge, when I registered the disputed domain name in October 2001, DirectNic.com immediately publicized my purchase of the domain name. Throughout this time, Complainant did nothing. Certainly, I am not responsible for Complainantís failure to purchase the disputed domain name earlier, when they could have. Also, I should not be falsely accused of using the domain in bad faith. I purchased this domain for a lawful, legitimate and respectable purpose. It is not fair to take the disputed domain name away from me now. I note that Complainantís lawyer, Mr. Rosenberg, provided no reasonable justification why Complainant did not register the disputed domain name for itself, or why it did not object when DirectNic.com first publicized my intention to purchase of the domain name.
Finally, the use of the disputed domain name for a non-profit website assisting Albanian youth is not likely to cause confusion with Complainantís alleged tradenames or trademarks.
Complainantís accusations that I repeatedly offered to sell the domain name is false. First, I want to make it clear Ė I never offered to sell the disputed domain name to Complainant. Also, I never offered to sell this name to any other individual.
Complainantís accusation that I advertised the disputed domain name "For Sale" is also false.
Any information appearing on the website was not intended to, nor did it expressly indicate that the disputed domain name was for sale. Indeed, no information ever appeared on my website explicitly stating that the domain name was for sale Ė because it was not. As soon as Mr. Rosenberg indicated to me that Complainant believed I was selling the domain name, all information on the website was immediately removed to eliminate any possible misunderstanding. At this time, the <macys.biz> website displays no information because I am waiting until the pending matter is resolved.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802); Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102) and Blue Sky Software Corp. v. Digital Sierra Inc. (WIPO Case No. D2000-0165).
The Panel finds the disputed domain name is identical to Complainantís trademark MACYíS.
The Complainant has established this element.
The Panel accepts that Complainantís MACYíS mark is famous. Complainant has not authorized Respondent to use its trademark nor to register the disputed domain name. Respondent is not known by the disputed domain name. These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interests in the disputed domain name on the part of Respondent. The evidentiary burden, therefore, shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrantís rights or legitimate interests to the disputed domain name. One such circumstance is specified in sub-paragraph 4(c)(i):
"(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;"
Even perfunctory preparations have been held to suffice for this purpose: Shirmax Retail Ltd. v. CES Marketing Group, Inc., (eResolution case AF-0104); Lumena s-ka so.o. v. Express Ventures Ltd., (NAF case FA00030000094375) and Royal Bank of Canada v. Xross, (eResolution case AF-0133).
Despite the particular meaning to Albanians of the word "macys" for which Respondent contends, there is no evidence that the draft home page produced by Respondent (showing a cat, a rainbow and two hands outstretched towards each other) was created prior to notice to Respondent of this dispute. In the absence of any evidence of even perfunctory preparations to use the disputed domain name for Respondentís asserted purpose, the Panel does not accept as plausible Respondentís explanation that he registered the disputed domain name as a non-profit website for Albanian youth, to provide them access to other Albanians to share problems and provide assistance to one another.
The Panel finds the Complainant has established this element. The Respondent has no rights or legitimate interest in the disputed domain name.
Bad faith registration and use
In SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (Case FA94956) a finding of bad faith was made where Respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (Case FA94737); Canada Inc. v. Sandro Ursino (Case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (Case FA95037).
Having regard to the fame of the Complainantís mark; the period of Respondentís residence in the United States (during which time, even if previously unaware of it, he could be expected to have become aware of Complainantís mark) and the failure of Respondent to assert, let alone establish, that he was unaware of that mark at the time he registered the disputed domain name, the Panel finds that Respondent was likely to have been aware of Complainantís mark at the time he registered the disputed domain name.
In light of the linking of the disputed domain name to a "For Sale" notice; the inadequacy of the explanation ("for personal reasons") for the changes made by Respondent to the registration information after contact from Complainant, including changes to the name of the registrant after the filing of the Complaint, in breach of paragraph 8(a) of the Policy (incorporated into the registration agreement pursuant to clause 3 thereof) and the proffering of an implausible and unsubstantiated explanation of his purpose in registering the disputed domain name, the Panel concludes that Respondent sought to benefit from the goodwill of Complainant and its famous MACYíS mark. See Telstra Corp. Ltd. v. Nuclear Marshmallows (WIPO Case No. D2000-0003), Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028) and Yahoo! Inc. v. M & A Enterprises (WIPO Case No. D2000-0748).
Paragraph 4(b)(i) of the Policy provides that it shall be evidence of both bad faith registration and bad faith use if it be established that sale at a profit to Complainant or a competitor of Complainant was the primary purpose of registering the disputed domain name.
Complainantís Exhibit C is a "For Sale" web page to which it asserts the disputed domain name was linked on December 20, 2001, some 6 weeks after the disputed domain name was registered by Respondent. Respondent has not denied the existence of this link on that day but submits that the conclusion should not be drawn that the disputed domain name was for sale at all, let alone to Complainant, because that web page does not expressly indicate that the disputed domain name was for sale and because no information ever appeared on his web site explicitly stating that the disputed domain name was for sale.
The Panel finds that the linking of a domain name to a web page announcing, simply, "For Sale" with the registrantís contact details, constitutes an offer to sell the domain name. The link itself provides the connection between the domain name concerned and the offer to sell.
The Panel concludes that sale at a profit to Complainant was the primary purpose of Respondent when he registered the disputed domain name and that, accordingly, Respondent has acted in bad faith both in registration and use of the disputed domain name.
The Complainant has established this element.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <macys.biz> be transferred to Complainant.
Alan L. Limbury
Dated: March 13, 2002