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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bob Kocher, Jr. v. Sheetal Parekh and C. Parekh

Case No. D2013-1596

1. The Parties

Complainant is Bob Kocher, Jr. of Lake Stevens, Washington, United States of America (“U.S.”) represented by Graybeal Jackson, LLP, U.S.

Respondent is Sheetal Parekh of Corona, California, U.S. and C. Parekh of Artesia, California, U.S.

2. The Domain Name and Registrar

The disputed domain name <fairyberries.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2013. On September 11, 2013, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by e-mail to the Center its verification response confirming Respondent as the registrant and provided contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 23, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 13, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 14, 2013.

The Center appointed Robert A. Badgley as the sole panelist in this matter on October 22, 2013. 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 paragraph 7 of the Rules.

4. Factual Background

The following is alleged in the Complaint and/or reflected in the Complaint annexes and not disputed by Respondent.

Complainant manufactures and sells lighting fixtures under the trademark FAIRY BERRIES and has done so since January 2011. Complainant holds a registered trademark with the United States Patent and Trademark Office for FAIRY BERRIES.

Respondent, trading as Koyal Wholesale, began some sort of “business relationship” with Complainant on August 1, 2011, pursuant to which Respondent was “support sales” of Complainant’s products. The next day, August 2, 2011, Respondent registered the Domain Name. Complainant objected to Respondent’s use of the Domain Name, asserting its trademark rights. At some point in time, Respondent began to sell “knock-off” goods under the name FAIRY BERRIES.

5. Parties’ Contentions

A. Complainant

Complainant’s salient factual allegations are set forth in the discussion above, and Complainant’s arguments will be reflected in the “Discussion and Findings” section below. Complainant asserts that it has satisfied the three elements under the Policy and seeks a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has 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

Complainant holds rights in the registered trademark FAIRY BERRIES. The Domain Name is identical to Complainant’s mark.

Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent has made no attempt to rebut Complainant’s allegations that Respondent had no authority to register the Domain Name, and that Respondent has been selling faux FAIRY BERRIES goods. Under these circumstances and on this record, it is clear that Respondent has no rights or legitimate interests in respect of the Domain Name.

Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith” :

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

(ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent is in bad faith within the meaning of Policy paragraph 4(b)(iv). It is undisputed that Respondent had Complainant’s mark in mind when registering the Domain Name. It is also undisputed in this record that Complainant never gave Respondent the right to use the FAIRY BERRIES mark in a Domain Name or otherwise, and that Respondent has been using the Domain Name to host a website at which knock-off lighting fixtures are sold as FAIRY BERRIES products. The Panel therefore concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the products offered by Respondent.

Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <fairyberries.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: October 22, 2013

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