WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yellow Lark International, Inc. d/b/a Business Heroine v. Angel Bernacchi, Angel Quintana, Inc.

Case No. D2015-1406

1. The Parties

Complainant is Yellow Lark International, Inc. d/b/a Business Heroine of Wheat Ridge, Colorado, United States of America ("United States"), represented by Dorsey & Whitney, LLP, United States.

Respondents are Angel Bernacchi and Angel Quintana, Inc. of Los Angeles, California, United States, represented by Verna Law, United States.

2. The Domain Name and Registrar

The disputed domain name <businessheroine.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 August 8, 2015. On August 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 11, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on August 15, 2015.

The Center verified that the Complaint together with the amended 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 the Rules, paragraphs 2 and 4, the Center formally notified Respondents of the Complaint, and the proceedings commenced on August 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2015. The Response was filed with the Center on August 28, 2015.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 7, 2015. 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.

On September 8, 2015 Complainant filed a "Second Amended Complaint". According to Section III (2) of the Second Amended Complaint, Complainant represents that Respondents also registered the domain name <businessheroinemag.com> and request that this domain name be added to this proceeding.

Respondent submitted a Supplemental Filing on September 21, 2015 responsive to Complainant's Supplemental Submission.

4. Factual Background

Complainant is in the female entrepreneur training industry. It owns U.S. Registration No. 4,470,173 for the mark BUSINESS HEROINE (the "Mark"), which it uses in connection with its female entrepreneur training, coaching, advertising and publicity services. The Mark was registered on January 21, 2014 and the application to register it was filed on June 5, 2013 with a first use in commerce date of May 5, 2013. Complainant owns the domain name <businessheroinemagazine.com>, which it uses for its website.

Respondents registered the Domain Name on December 31, 2012. They have "pointed" or re-directed the Domain Name to their website for a similar business to that of Complainant, Holistic Fashionista. Respondents' website is at "www.holisticfashionista.com".

The Parties had a short-lived informal business arrangement in which the Mark was somehow implicated.

5. Parties' Contentions

A. Complainant

The parties discussed the idea of an online business marketing and sales platform targeting female entrepreneurs from 2012 until March 2013, when they decided the name Business Heroine would be used solely by Complainant. The parties chose to invest in their individual businesses starting from March 12th, 2013. Complainant would do business as Business Heroine and Respondents as Holistic Fashionista. Any potential legal partnership between the parties was dissolved through their mutual oral agreement and their subsequent actions. There was no written partnership agreement. The parties ultimately stopped communicating via phone and email in March of 2013. Respondents refused to answer calls or reply to Complainant's emails. Beginning as early as September 2013, Complainant attempted to contact Respondents again regarding the Domain Name because Complainant registered in Colorado as "Business Heroine" d/b/a. Complainant mailed Respondents several certified letters regarding the infringing use of the Domain Name that were returned unopened.

Complainant provides its services under the Mark throughout the world. Complainant has achieved tremendous public exposure through her social media websites such as Facebook, Twitter and Pinterest, all using the Mark, which is inherently distinctive based upon Complainant's wide scale and continuous use since at least as early as January 5, 2013.

The Domain Name is identical and confusingly similar to Complainant's "Business Heroine" business name and Mark. The inclusion of ".com" is not significant in determining similarity. Based upon the parties mutual agreement to engage in separate and competing businesses, Complainant's trademark registration and long and continuous use of the Mark, Respondents cannot be said to have any legitimate rights in the Domain Name in connection with its coaching services and website. Since the mutual agreement to engage in separate businesses, Respondents have never been commonly known by the Domain Name or the Mark. Rather, Respondents' only use of the Domain Name is to redirect Internet users to Respondents' website, Holistic Fashionista (and briefly prior to a website, "www.heartshapedheroine.com"), which is engaged in selling or providing goods or services that directly compete with those of Complainant. Respondent is using the Domain Name as a source of income to redirect Internet traffic.

Respondents were aware of Complainant's business idea when Complainant first decided to use Business Heroine for coaching, advertising, and publicity services. Complainant has continued to invest in her business by registering the service mark and widely promoting her services as "Business Heroine". At Respondents' request, the parties mutually agreed that they would pursue separate businesses and Complainant would continue to use "Business Heroine". Respondents had access to the Internet and undoubtedly were aware of Complainant's open use of the Mark.

Because Respondents' website features business, entrepreneurial, branding and coaching services targeted to Complainant's identical market, it is reasonable that Internet users would easily click on one of Respondents' links when actually searching for Complainant's business. Respondents have demonstrated their bad faith by knowingly redirecting traffic from "www.businessheroine.com" to their competing website, "www.holisticfashionista.com", thereby receiving sales from confused customers. In addition, Respondents offered Complainant an opportunity to remit payment for services neither requested nor rendered, and when payment was not forthcoming, Respondents redirected traffic to cause confusion and steal clients.

B. Respondents

In paragraph 12 of the Amended Complaint, Complainant admits this case does not come under the Policy. Complainant and Respondents were supposed to be business partners. That arrangement did not work and the parties went their separate ways. They did not memorialize that arrangement. Despite Complainant's registration of the Mark, there is no trademark or domain name dispute – this dispute is the result of a business arrangement that was never completed and is beyond the scope of the Policy.

After the parties split up, Respondents registered the Domain Name on December 31, 2012. Thereafter, Complainant filed an application to register the Mark on June 5, 2013 – 6 months after Respondents' filing date. There cannot be bad faith because Complainant had no trademark rights, the Policy does not anticipate the business nature of this dispute, and Respondents filed before Complainant.

In the screenshot (made of record), Respondent Angel Bernacchi and Complainant's owner are pictured at a time when they were involved in a venture. On the bottom of the screen it reads "Angel Quintana, Inc. + The Virtual Vagabond | All Rights Reserved Copyright 2012." There is mention of "Business Heroine Magazine." Thus, there is an association between Respondents and the phrase "business heroine" such that Respondents have rights in the phrase even if those rights are common-law trademark rights. This proceeding is restricted to clear willful infringements. Other IP right violations, if any, must be solved by the national courts.

There is no evidence that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant. In fact, it was Complainant who offered to purchase the Domain Name on March 18, 2013. This was done long before this proceeding commenced, long before the application to register the Mark was filed, but after the website in the parties' joint venture was active. The Domain Name was not registered to prevent Complainant from reflecting the Mark in a corresponding domain name and Respondents have not engaged in a pattern of such conduct. Also, Respondents did not register the Domain Name for commercial gain. There was a relationship between the parties and there was a connection between Respondents and "Business Heroine", then Respondents obtained the Domain Name. Complainant's trademark rights came afterwards.

Complainant has committed laches. The parties split up before consummating a business relationship, but shared information in 2012. Respondents obtained the Domain Name at the end of 2012. In March 2013, Complainant was aware of the Domain Name and asked to buy it as a part of the former business relationship. On June 5, 2013, Complainant filed its application to register the Mark. On August 18, 2015, Complainant filed this proceeding. There is no bad faith, because Complainant waited too long to assert any argument about its rights to the Domain Name.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements that 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. Supplemental Filings

Under the Policy and the Rules, parties have no right to submit additional arguments or evidence outside the Complaint and Response. The panel may, in its sole discretion however, request further statements or documents from the parties under paragraph 12 of the Rules; and a party's request may be regarded as an invitation to the panel to exercise this discretion. Here the Panel did not request additional arguments or evidence from the parties. Thus, the Panel has the sole discretion to determine the admissibility of the Supplemental Filings.

As mentioned above, Complainant requests that the Panel permit its Supplemental Filing to add the domain name <businessheroinemag.com> to the proceedings and reiterates several of its arguments from its Amended Complaint as regards this additional domain name. Respondent in its submission requests the Panel to ignore Complainant's Supplemental Filing and addresses the statements and allegations therein.

In view of the Panel's findings below, the Panel has not considered the Supplemental Filings. .

B. Identical or Confusingly Similar

Complainant holds rights in the Mark BUSINESS HEROINE through U.S. Registration No. 4,470,173. The Panel further finds that the Domain Name is confusingly similar to the Mark insofar as the Domain Name <businessheroine.com> incorporates the Mark in its entirety. Furthermore, it is well established that the gTLD ".com", being a functional requirement of the domain name system, can be disregarded. See for example Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046.

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

C. Rights or Legitimate Interests, Registration and Use in Bad Faith

It is impossible to determine in this administrative proceeding on the basis of the available record whether Respondents have any rights or legitimate interests in the Domain Name and furthermore, whether the Domain Name was registered in bad faith. The Parties agree that for a short period they were engaged in some business arrangement but there are no documents of record from which the Panel can determine what that arrangement was and what it entailed (e.g., trademark rights and ownership). Likewise, there are no documents of record to assist the Panel in determining whether in the context of dissolving their business relationship the Parties discussed ownership of any trademark rights and whether they came to any final agreement related to such rights (e.g., Did Respondents establish their own rights in the Mark? Did Respondents acquire any rights to use the Mark from Complainant? If rights exist, what is their scope?). The couple of documents that the Parties made of record alone do not support the allegations of either Party.

In addition to the inadequacy of this administrative proceeding to generate sufficient facts to determine the issues under the Policy, the Panel believes that the dispute here is not even one within the scope of the Policy. Rather, because of the terminated business relationship between the Parties, the dispute possibly implicates not only ownership issues but also trademark infringement and unfair competition issues, for example, and the monetary and equitable relief that accompanies them. Perhaps a court proceeding in which discovery is permitted will produce evidence that supports the Parties' legal positions and prove the intent of the Parties with regard to who has rights in the Mark and the scope of those rights. Likewise, testimony under oath and cross-examination would hopefully produce probative evidence of the same. It bears noting that the Parties have made various factual representations to support their positions (in addition to arguments) for which there is no supporting evidence of record. Such representations will be subject to more intense scrutiny in court proceedings. It is unclear whether they will eventually hold up.

D. Laches

The Panel need not address this issue for the reasons set forth in (C) above.

7. Decision

For the foregoing reasons, the Complaint is denied.

Harrie R. Samaras
Sole Panelist
Date: September 22, 2015