WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mazel Events, LLC v. WhoisGuard, Inc. / Jeff Strank, NetParty, LLC
Case No. D2019-0070
1. The Parties
Complainant is Mazel Events, LLC of Boca Raton, Florida, United States of America (“United States”), represented by Greenspoon Marder, LLP, United States.
Respondent is WhoisGuard, Inc. of Panama, Panama / Jeff Strank, etParty, LLC of Chicago, Illinois, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <matzoball.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2019. On January 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 18, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 23, 2019.
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 Respondent of the Complaint, and the proceedings commenced on January 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2019. Upon Respondent’s request, the Center granted the automatic extension of the response due date under paragraph 5(b) of the Rules. A further extension under paragraph 5(e) of the Rules was granted after the Parties had agreed for the Response to be submitted until
February 27, 2019. The Response was filed with the Center on February 27, 2019.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on March 11, 2019. 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, Mazel Events LLC, conducts annual holiday parties in various cities across the United States for Jewish singles on December 24 (Christmas Eve). Complainant’s events were originally conducted by its predecessor-in-interest, the Society of Young Jewish Professionals, Inc. (“SYJP”), a company owned by Andrew Rudnick. The first event organized by Andrew Rudnick and/or SYJP was in 1987. These events have used the name MATZO BALL or MATZOBALL. In 2013, the assets relating to SYJP’s annual event, including the unregistered MATZOBALL mark, were transferred to Complainant, a company owned by Mr. Rudnick’s wife and for which Mr. Rudnick acts as a consultant and agent. In or about 2014, SYJP filed for bankruptcy in the United States.
On January 5, 2018, Complainant filed a trademark application in the United States to register the mark MATZOBALL, claiming a first use date of at least as early as October 1, 1987. Complainant’s application for MATZOBALL issued to registration on August 14, 2018 (Registration No. 5540037).
Respondent, Jeff Strank, Net Party, LLC, sponsors a competing “Jewish Singles” event each year on December 24 in New York City and Los Angeles. Respondent has been conducting these events since 1995 and, more recently, other events for Jewish singles. Respondent currently operates a website at <www.tribester.com> through which it promotes its events.
Complainant and Respondent have much past history with one another and have had prior battles concerning the name and mark MATZOBALL. The Parties appear to have had communications going back to at least as early as 2005. Moreover, in reviewing the Parties’ submissions which include records from the United States Patent and Trademark Office (“USPTO”) it appears that SYJP owned a trademark registration in the United States for mark THE MATZO BALL (Registration No. 1610178) that issued to registration in August 1990. That mark was subsequently cancelled on February 17, 1997. SYJP then secured a registration for MATZO BALL in 2000 (Registration No. 2340692), but that registration was also cancelled in November 2010. Thereafter, SYJP filed an application for MATZOBALL in December 2011, but such was opposed by Respondent (Opposition No. 91209498). On June 8, 2014, Respondent’s opposition was sustained by the United States Trademark Trial and Appeal Board (the “TTAB”) and SYJP’s application was refused registration. Complainant then filed an application to register MATZOBALL on October 17, 2014 (Serial No. 86426791). Respondent filed a letter of protest against the application that resulted in an office action being issued by the USPTO refusing registration. That application was subsequently abandoned by Complainant on January 11, 2016, on account of Complainant’s failure to respond to a second office action that had been issued by the USPTO. Complainant then filed an application for MATZOBALL THE NATION’S #1 HOLIDAY PARTY on December 18, 2015 (Serial No. 86853380). That application was refused registration by the USPTO and the application was abandoned by Complainant on October 17, 2016, on account of Complainant failing to file a response to an office action from the USPTO refusing registration.
On or about December 5, 2016, Complainant sent a demand letter to Respondent regarding its use of name MATZOBALL and its registration and use of the disputed domain name. Respondent responded to Complainant’s demand letter on December 15, 2016, and rejected Complainant’s claims and specifically reserved its rights with respect to the disputed domain name.
As to when the disputed domain name was registered or acquired by Respondent, the Parties’ differ on the date of such. Respondent claims to have purchased the disputed domain name in June 2007 and Complainant asserts that Respondent obtained the disputed domain name in or about 2016 (Complainant later suggests that Respondent first registered the disputed domain name in 1999). While it is not altogether clear when Respondent acquired the disputed domain name, it appears that Respondent owned the disputed domain name as early as July 2008 as attempts were made to purchase the disputed domain name through the Domain Buying Service of GoDaddy.com, Inc. The notices for the attempts were sent to Respondent. There were subsequent offers to purchase the disputed domain name in 2008, 2011, and 2012 as well as an offer by Complainant’s principal, Andrew Rudnick, in January 2013, and a subsequent offer in 2015. These offers were all addressed to Respondent, who refused to sell the disputed domain name. In January 2016, Respondent, through its attorney, indicated to Complainant that Respondent might be willing to sell the disputed domain name to Complainant if a satisfactory arrangement between the Parties could be achieved. It is not clear that anything further regarding this possible transaction ever occurred, but in December 2016, as already noted, Complainant sent Respondent a demand letter and Respondent responded and rejected Complainant’s demands.
5. Parties’ Contentions
Complainant asserts that it owns all rights in the name and mark MATZOBALL in connection with its annual social event based on its use and promotion of MATZOBALL since 1987, and by virtue of its 2018 United States trademark registration for MATZOBALL. Complainant also asserts that the MATZOBALL mark is not descriptive or generic and maintains that the rejection of its application for MATZOBALL THE NATION’S #1 HOLIDAY PARTY in 2016 was due to an error by its then attorney in incorrectly filing an application with a claim of acquired distinctiveness as though MATZOBALL was a descriptive phrase.
Complainant contends that the disputed domain name is identical and confusingly similar to Complainant’s MATZOBALL mark as it fully consists in its entirety of the MATZOBALL name and mark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) registered the disputed domain name long after Complainant had started using the mark MATZOBALL in commerce, (ii) is not a licensee or otherwise authorized by Complainant to use the MATZOBALL mark, (iii) is a competitor of Complainant, and (iv) has recently used the disputed domain name to redirect traffic to his website at <tribester.com> which promotes Respondent’s competing event.
Lastly, Complainant contends that Respondent has registered the disputed domain name in bad faith given that Respondent, as a competitor of Complainant, was well aware of Complainant’s rights in MATZOBALL and of Complainant’s longstanding use of MATZOBALL for a competing event. Complainant also contends that Respondent registered the disputed domain name in bad faith because in January 2016 Respondent offered to sell the disputed domain name to Complainant and threatened to interfere with Complainant’s efforts to protect its MATZOBALL mark. Finally, Complainant asserts that Respondent has used the disputed domain name in bad faith by using it to redirect web traffic to Respondent’s website at <tribester.com> for a competing Christmas Eve event and to disparage Complainant.
Respondent rejects Complainant’s contentions.
Respondent contends that Complainant has consistently competed unfairly with Respondent over the course of 23 years and provides examples of alleged unlawful competition by Complainant. Respondent maintains that Complainant is well aware that Respondent obtained the disputed domain name well before 2016 and did so in good faith. In that regard, Respondent maintains that the term “matzo ball” (and variants such as “matzoh ball” or “matzah ball”) is generic and has been used since the early 1980’s by numerous organizations in connection with other annual events for Jewish singles on Christmas Eve.
Respondent also argues that Complainant’s alleged rights in MATZOBALL are questionable given that Complainant allowed its prior United States trademark registrations for the marks THE MATZO BALL and MATZO BALL to lapse, and given that Respondent successfully opposed two attempts by Complainant to register the MATZOBALL mark and the USPTO refused registration of the MATZOBALL and MATZOBALL THE NATION’S #1 HOLIDAY PARTY marks on the grounds that these marks are descriptive of Complainant’s services. Respondent maintains that Respondent obtained its 2018 United States trademark registration for MATZOBALL because neither Respondent nor his attorneys were aware of the filing and would have opposed had they known about it.
Respondent argues that Complainant’s claim that MATZOBALL is uniquely associated with Complainant is belied by the fact that (i) numerous third parties have used the mark for similar events, (ii) Complainant’s predecessor-in-interest went into bankruptcy and never spent much money on promoting its annual events and (iii) Andrew Rudnick in the bankruptcy proceeding regarding SYJP testified in 2014 that “Matzoball hasn’t made money,” that “Matzoball has lost its ground”, and that “there is nothing proprietary about it.” Respondent maintains that any arguable public recognition of MATZOBALL as connected to Complainant has been more recent and as a result of more current efforts by Complainant to try and publicize its event. Nevertheless, Respondent argues that the term “matzo ball” remains generic.
Respondent contends that it has rights and legitimate interests in the disputed domain name, as he acquired the disputed domain name in 2007 when the term “matzo ball” was a generic term to describe Christmas Eve Jewish singles events. Respondent maintains that he did not use the disputed domain name at any time from 2007 through 2016 for the reason that although he believed “matzo ball” was a generic term he had yet to prove that before the USPTO or in a Court. Respondent maintains that many other parties were using the “matzo ball” term in connection with their events throughout that period of time, but that Respondent waited to do so until after the USPTO had rejected Complainant’s application for MATZOBALL in 2016.
Finally, Respondent rejects Complainant’s contentions that the disputed domain name was registered and used in bad faith. Respondent asserts that it registered the disputed domain name in 2007 because it is a “.com version” of a generic term to describe December 24 Jewish singles events. Respondent notes that it acted in good faith by not using the disputed domain name until and after the USPTO had refused registration of MATZOBALL on the grounds that “matzo ball” was generic. At that point, Respondent used the term “matzo ball” to describe his event, as had many other third parties. Respondent argues that its use of “matzo ball” as a reference and in the disputed domain name has been in its generic sense and that Mr. Rudnick actually supported Respondent’s continued activities in December 2017 as beneficial to him and Complainant. Lastly, Respondent maintains that he has acted in good faith at all relevant times to prevent any confusion with Complainant and that once he became aware that Complainant had obtained a trademark registration for MATZOBALL in August 2018 he stopped using the disputed domain name.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns a 2018 United States trademark registration for the MATZOBALL mark in connection with its entertainment services.
With Complainant’s rights in the MATZOBALL mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) “.com”) is identical or confusingly similar with Complainant’s mark. See, B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, for purposes of the first element the disputed domain name is identical to Complainant’s MATZOBALL mark as it consists of the MATZOBALL mark in its entirety at the head of the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s MATZOBALL mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Given that Complainant has not established the third element of bad registration and use, as discussed below, the Panel does not need to address the issue of whether Respondent has rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent both registered and used the disputed domain name in bad faith. The assessment of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name.
This is an unusual case for a number of reasons. From the record before the Panel it appears that the Parties have had a contentious and acrimonious past going back to at least 2005, if not earlier. Much of that history is not mentioned by Complainant in its submissions. Indeed, Complainant has made no mention of the fact that (i) Complainant’s predecessor-in-interest SYJP had abandoned two trademark registrations it had secured in the United States for the marks THE MATZO BALL and MATZO BALL, (ii) Respondent successfully opposed an application that SYJP had filed for MATZOBALL in 2011, and (iii) the USPTO had rejected in 2015 an application for MATZOBALL on the grounds that the mark is descriptive of Complainant’s services. Complainant also fails to mention that its principal Andrew Rudnick attempted to acquire the disputed domain name in at least 2013 and that Complainant had sent a demand letter to Respondent in December 2016 regarding its use of MATZOBALL and the registration and use of the disputed domain name, and that Respondent, through its attorneys, had sent a detailed response in December 2016 rejecting Complainant’s claims and taking the position that the term “matzo ball” is a generic term used to refer to Christmas Eve parties for Jewish singles.
In failing to disclose much of the past history underlying the Parties’ dispute, Complainant’s case comes down to misleadingly arguing that Respondent acquired the disputed domain name in 2016, that Respondent then used the disputed domain name to promote his competing annual Christmas Eve event for Jewish singles, that Complainant had strong common law rights in MATZOBALL at that time, and that Complainant’s filing of an application for MATZOBALL THE NATION’S #1 HOLIDAY PARTY in 2016 with a claim of acquired distinctiveness was a mistake by Complainant’s prior attorney, particularly as Complainant obtained a trademark registration for MATZOBALL in August 2018 with no issue.
While the facts as presented by Complainant in this matter could arguably suggest bad faith on the part of Respondent, that is not a complete presentation of what actually happened and the failure of Complainant and its attorneys to mention many key facts in this matter suggests that they may understand that their case is tenuous.
To be sure, this is not simply a case of a party registering a domain name to horse around with a competitor. It may be that the Parties in this matter have a dislike for one another, given that they have conducted competing annual events for at least 23 years, but the evidence before the Panel suggests Respondent has contested Complainant’s rights in the term “matzo ball” for a Christmas Eve party for Jewish Singles for many years. Indeed, in a 2005 communication to Complainant’s principal, Respondent asserted “I’m going to challenge your trademark, too with the veritable mountain of evidence I’ve accumulated over the years from the New York Times on down.” Thereafter, and in the years that followed, Respondent did indeed challenge Complainant’s rights. Respondent successfully opposed an application that had been filed by SYJP for MATZOBALL and filed Letters of Protest against other applications subsequently filed by Complainant for MATZOBALL and MATZOBALL THE NATION’S #1 HOLIDAY PARTY that resulted in office actions from the USPTO rejecting Complainant’s applications. Respondent also rejected demands sent by Complainant’s then attorney in December 2016, and threatened to file a declaratory judgment action if Complainant persisted with its demands.
Given this background, it is not apparent that Respondent was acting in bad faith when it acquired the disputed domain name in or about June 2007 (the date when Respondent claims it acquired the disputed domain name). While there may be an argument that Respondent acquired the name in bad faith to deprive Complainant’s predecessor-in-interest from owning the disputed domain name, particularly as SYJP owned at that time a registration in the United States for the MATZO BALL mark for entertainment services, it is equally apparent that if the term “matzo ball” was a generic term at that time, then Respondent’s actions might not have been undertaken in bad faith.
It is notable that Complainant does not make any arguments regarding Respondent’s actions prior to 2016. It is also significant that SYJP did not renew its registration for the mark MATZO BALL in 2010 and allowed it to lapse. There is no evidence in the record providing any explanation for the registration lapsing. It is not clear whether SYJP stopped using the MATZO BALL mark at that time or inadvertently let the registration lapse. Similarly, even if SYJP was using MATZO BALL it is not clear what the extent of that use might have been in or around that period of time. Respondent, on the other hand, has provided much evidence regarding third party uses of the term “matzo ball” or derivatives thereof, such as “matzah ball,” for similar type events during that general period of time. Such evidence tends to support the notion that “matzo ball” was not uniquely associated with SYJP and was functioning as a descriptive or even generic term for events on Christmas Eve for Jewish singles. Thereafter it appears that Respondent was vindicated in light of its successful opposition to an application filed by SYJP in 2011 for MATZOBALL and given the USPTO’s subsequent rejection of two applications filed by Complainant on the grounds that “matzo ball” was descriptive of an annual Christmas Eve event/party for Jewish singles.
Complaint seemingly ignores this past history regarding its claimed MATZOBALL mark by claiming that Complainant has longstanding common law rights in MATZOBALL going back to 1987. In support of that claim, Complainant has provided a number of articles concerning Complainant’s event as well as examples of Complainant’s current use of MATZOBALL, such as on social media platforms like Twitter, Facebook, and Instagram. A number of the articles submitted, though, date from 2017 and 2018 or do not have dates or have dates that are ineligible. There are only a handful that appear to predate 2010. Respondent has countered that evidence by providing a number of examples of uses of “matzo ball,” and variants of such, for third party events and parties for Jewish singles on Christmas Eve (or as a reference to such annual Christmas Eve events). There is also the evidence the USPTO relied on when it rejected Respondent’s applications in 2015 and 2016 for MATZOBALL and MATZOBALL THE NATIONS #1 HOLIDAY PARTY. Added to that is the testimony of Complainant’s principal, Andrew Rudnick, during the bankruptcy proceeding involving SYJP in 2014 that “Matzoball hasn’t made money,” that “Matzoball has lost its ground’, and that “there is nothing proprietary about it.” Such sworn testimony certainly puts into question some of Mr. Rudnick’s statements in his 2019 declaration in this proceeding that “the Matzo Balls have been extremely successful and well-attended over the years” or that the MATZOBALL mark “has become well-recognized by consumers as designating Mazel as the source of services so marked.”
In combination, it is questionable whether Complainant had strong common law rights in MATZOBALL throughout the relevant periods when Respondent registered the disputed domain name and then used the disputed domain name in 2016. While that arguably might be the case now in 2019, the evidence before the Panel does not show that to be the case in 2016, when Respondent made use of the disputed domain name for its competing event, or in 2007 when Respondent acquired the disputed domain name. Simply put, on the record before the Panel, Complainant has not proven by a preponderance of the evidence that Respondent acted in bad faith when Respondent registered or used the disputed domain name.
To be sure, to the extent that Complainant believes it may have a claim against Respondent for trademark infringement or unfair competition based on Respondent’s use of the disputed domain name, such a claim belongs in another forum and is beyond the scope of this UDRP proceeding. In such an action, it would be assumed that a full record of the past dealings between the parties would be developed, that the strength of Complainant’s trademark rights in MATZOBALL would be assessed and that the parties would be cross examined as to their contentions. Here, however, as it has not been established by Complainant that Respondent registered and used the disputed domain name in bad faith, Complainant’s complaint fails.
For the foregoing reasons, the Complaint is denied.
Date: March 26, 2019