WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
iFixit v. Sarkes Mkrdichian, iFixitUSA / Sarkes Mkrdichian, Combine Performance & Sarkes Mkrdichian Golf
Case No. D2021-0381
1. The Parties
Complainant is iFixit, United States of America (“United States”), represented internally.
Respondent is Sarkes Mkrdichian, iFixitUSA, United States / Sarkes Mkrdichian, Combine Performance & Sarkes Mkrdichian Golf, United States, represented by Brown Patent Law, PLLC, United States.
2. The Domain Names and Registrar
The disputed domain names <ifixitusabusiness.com> and <ifixitusa.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2021. On February 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 10, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 12, 2021.
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” 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 February 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2021. The Response was filed with the Center on March 22, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 29, 2021. 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 April 13, 2021, the Panel issued Procedural Order No. 1, which stated:
“The Panel requests the following information and documentation by April 19, 2021:
1. From Sarkes Mkrdicichian, an affidavit notarized and sworn under penalty of perjury, which:
(a) confirms or denies whether he has controlling authority over IFIXITUSA LLC, COMBINE PERFORMANCE LLC, and LIQUID COOL LLC;
(b) confirms or denies whether he was aware of Complainant or the IFIXIT trademark when the Domain Name <ifixitusa.com> was registered on August 25, 2016; and
(c) provides contemporaneous evidence that “IFIXITUSA.COM has been operating a legitimate business since at least 2016.”
2. From Complainant, contemporaneous evidence that the IFIXIT mark was well known as of August 25, 2016, both in general and in connection with computer sales or computer-related services; contemporaneous evidence that Complainant sold computers between 2006 and 2016; a response to Respondent’s allegation (in its motion to disregard Complainant’s motion for Rule 11 sanctions in the TTAB proceedings) that Complainant has fabricated evidence regarding an invoice; and a response to Respondent’s allegation (in its motion to disregard Complainant’s motion for Rule 11 sanctions in the TTAB proceedings) that Complainant committed fraud in its trademark application and renewal application.
The Parties may respond to each other’s foregoing submissions by April 26, 2021.
The Panel reserves the right to seek further information and documentation.”
On April 19, 2021, the Parties responded to Procedural Order No. 1, and on April 26, 2021, the Parties replied to each other’s April 19, 2021 responses.
4. Factual Background
This is an acrimonious dispute between two parties (and some related entities) who are also engaged in litigation in at least one other forum. That litigation, which concerns a challenge by a related entity controlled by Respondent’s principal to Complainant’s trademark registration, could conceivably have an impact on Complainant’s trademark rights. That litigation, as the Panel understands it, is ongoing. The Panel’s limited knowledge of that litigation, as presented by both Parties in their respective filings in this case, reflects that the Parties are behaving with the same degree of acrimony in that forum as they are here.
The Panel in this proceeding has no idea how the Parties’ court litigation will turn out, or when it will conclude. In any event, the Panel will endeavor to confine itself to the issues directly relevant to a claim under the UDRP, and will seek to avoid discussion of extraneous allegations and issues raised by the Parties in this proceeding. Even so, the court litigation inevitably looms over this proceeding and, as is discussed below, may have an impact on the Panel’s disposition of this case under the UDRP.
Finally, the Panel notes that, notwithstanding its efforts to tease out more relevant information via its Procedural Order No. 1, the record in this case remains opaque, in part due to the Parties’ selective disclosures, apparent omissions, and general legerdemain. The state of affairs as of certain dates – which can be pivotal in a UDRP proceeding – is also not as clear as one might wish.
Complainant describes itself as “a well-known brand in electronics repair with worldwide sales.” Complainant asserts that its IFIXIT trademark is registered in many countries “in connection with repair parts and tools and repair guides and services for consumer electronics and gadgets.” For years, Complainant states, the IFIXIT mark “has been used extensively both digitally and on professional and consumer merchandise.”
Complainant has registered the IFIXIT trademark with the United States Patent and Trademark Office (“USPTO”), Reg. No. 3,255,680 registered on June 27, 2007. According to this trademark registration, since February 10, 2006, iFixit has been using the IFIXIT mark in commerce in connection with “online retail store featuring computers, computer peripherals and computer accessories...; online retail store services featuring easy to use electronic repair and instruction manuals, all for use in do-it-yourself disassembly and reassembly of laptop computer parts replacement and upgrades.”
Complainant has also registered the mark IFIXIT in jurisdictions including Australia, Austria, China, Denmark, Finland, Germany, Iceland, India, Japan, Mexico, New Zealand, the Philippines, Russia, Singapore, South Korea, Sweden, Switzerland, Taiwan, Turkey, the United Kingdom, and Vietnam, and with the World Intellectual Property Organization.
Complainant’s website, “www.ifixit.com”, features repair manuals and repair kits, as well as tools and parts, for use in repairing electronic devices. According to a sworn Declaration by Complainant’s General Counsel, Cynthia Replogle, between February 10, 2006 and August 25, 2016 (the latter date being the date the first of the two Domain Names at issue in this case was registered), the “www.ifixit.com” website had 284 million users, of which 128 million were from the United States. One of the web pages at this site, for Apple computers, had 1.25 million pageviews in the twelve-month period ending August 25, 2016.
According to the Replogle Declaration, Complainant’s YouTube channel had 220,000 subscribers and 36,000,000 views as of August 25, 2016. As of September 1, 2016, Complainant had 98,500 Facebook followers, 53,600 Twitter followers, and 15,100 Instagram followers. The Replogle Declaration also cites several media reports prior to August 25, 2016, discussing Complainant and referring to Complainant by its IFIXIT trademark, mostly in connection with Complainant’s repair services.
Respondent describes itself as a “computer selling business.” According to the Response, iFixitUSA LLC “was formed in 2016 to sell computers.” The Respondent iFixitUSA LLC owns the Domain Name <ifixitusa.com>, which was registered on August 25, 2016.
According to the Response, the Domain Name <ifixitusabusiness.com>, which was registered on May 25, 2020, is owned by Combine Performance LLC and Sarkes Mkrdichian Golf. The Response states that Combine Performance LLC “was formed in 2020 to provide in person Information Technology services to businesses in the Phoenix area.”
The Domain Names resolve to two very similar commercial websites. One of the prominent statements at Respondent’s <ifixitusa.com> site is: “iFixitUSA repair is a full service computer repair and sales shop with multiple locations in the Phoenix valley.”
Respondent asserts that Complainant is a purveyor of parts and repair manuals. According to Respondent, Complainant is not a seller of computers and certainly was not known in the consuming public as a seller of computers at the time the Domain Names were registered. Complainant presents some slight evidence of having sold computers under the IFIXIT mark, and has also argued that “computer” should be interpreted more broadly than Respondent argues (see below), but ultimately Complainant asserts that the extent of its computer sales is not ultimately germane to the disposition of this UDRP dispute.
Respondent asserts that its commercial offerings do not overlap with those offered by Complainant, and that the Parties target different markets. According to Respondent, its clientele “are sophisticated businesses needing computers (IFIXITUSA.COM) and sophisticated businesses in need of networking and information technology services (IFIXITUSABUSINESS.COM).” These users, Respondent adds, “will never need repair manuals and tools for their ‘gadgets’ or ‘consumer electronics.’” By contrast, Respondent asserts, “Complainant’s clientele are HOBBYISTS.”
According to the Sarkes Mkrdicichian affidavit submitted in response to the Panel’s Procedural Order No. 1, Mkrdicichian “was not aware of the IFIXIT trademark when the domain name <ifixitusa.com> was registered on August 25, 2016.” The affidavit then states: “I was aware of IFIXIT (Complainant), on August 25, 2016, but only as a small California only repair guide and tool maker.”
According to Complainant, Respondent’s iFIXiTUSA stylized logo on its website mimics Complainant’s stylized IFIXIT website logo. Respondent disputes this. Ultimately, the Panel notes some superficial similarities between the logos, and notes that the “usa” in Respondent’s logo is in smaller script such that the letters “iFIXiT” which predominate, but concludes that there are differences and that the similarities are not sufficient to present much probative evidentiary value to the disposition of the elements required under the UDRP to resolve this dispute.
Complainant states in its Complaint that it “has received reports of actual consumer confusion between Complainant’s IFIXIT mark and Respondent’s website content, but Complainant has provided no evidence of such alleged confusion.
On August 23, 2020, Liquid Cool Computers, Web & Graphics Design, LLC (an entity in which, like Respondent iFixitUSA LLC, Sarkes Mkrdicichian has controlling authority; hereinafter “Liquid Cool”) filed a petition with the United States Trademark Trial and Appeal Board (“TTAB”) to cancel the USPTO registration of Complainant’s IFIXIT trademark. One of the main issues in the TTAB suit is Liquid Cool’s allegation that Complainant falsely claimed that it sold computers under the IFIXIT trademark. Complainant apparently provided a 2006 receipt showing the sale of a computer. Liquid Cool (and Respondent in this proceeding) claims that the 2006 receipt may have been fabricated (apparently based on Complainant’s business address shown on the 2006 receipt, which differs from Complainant’s business address as shown on a 2006 screenshot of Complainant’s website).
Another argument surrounding the issue whether Complainant sells computers under the IFIXIT mark is whether the word “computer” should be understood to encompass more than just a laptop or desktop computer. Complainant has provided dictionary definitions indicating that a “computer” is “a programmable device that can store, retrieve, and process data.” Under this definition, Complainant asserts, its sale of devices meeting this dictionary definition demonstrates that Complainant’s claim to have sold “computers” under the IFIXIT mark is truthful. Respondent (like its related company, Liquid Cool) counters with the argument that, notwithstanding the dictionary definition of “computer” upon which Complainant relies, such a broad definition does not comport with the general consuming public’s basic understanding of the term “computer”.
The TTAB proceedings, as far as the Panel is aware, are still ongoing, with the parties currently briefing Complainant’s requests to impose “Rule 11” sanctions on Liquid Cool for pursuing an allegedly frivolous cancellation proceeding and making allegations of fraud with no basis.
On July 22, 2020, Liquid Cool LLC (the Panel believes this to be Complainant’s shorthand for the entity referred to above as Liquid Cool Computers, Web & Graphics Design, LLC; at a minimum, the Panel finds it more likely than not that Liquid Cool LLC is related to the other entity) filed a trademark application with the USPTO to register, on an intent-to-use basis, the mark IFIXITUSA. On November 16, 2020, the USPTO denied the application on the basis that the proposed mark would likely be confused with Complainant’s registered IFIXIT mark.
There are myriad additional factual allegations and arguments offered by the Parties, but the Panel need not lay them out, since, for purposes of this UDRP proceeding, they are not germane.
5. Parties’ Contentions
Complainant contends that it has established all three elements required under the Policy for a transfer of each of the Domain Names.
Most of Respondent’s relevant arguments are folded into the “Factual Background” section above, since the Panel found that setting out the facts, allegations, and arguments in a single narrative was, in this unusual case, the clearest manner by which to tee up the issues to be decided.
6. Discussion and Findings – Consolidation Issue
Under paragraph 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a panel may consolidate in a single proceeding a complaint filed against multiple respondents, based primarily on whether: (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.”
Guided by these principles, the Panel here believes that consolidation would be appropriate, and would work no injustice on the Parties.
The Domain Name <ifixitusa.com> was registered by IFixitUSA LLC. The Domain Name <ifixitusabusiness.com> was registered by Combine Performance LLC and “Sarkes Mkrdichian Golf.” (The Panel observes that the affidavit submitted by Respondent spelled the name “Mkrdicichian,” and that spelling appears elsewhere in the record, but at times the name is spelled “Mkrdichian.”)
The Panel notes that the stylized logo for iFIXiTusa and iFIXiTusabusiness are essentially identical, except for the additional word “business” in the latter logo. The respective websites to which the two Domain Names resolve bear these similar logos, and are otherwise laid out very similarly. It is rather obvious, indeed, that the owner of the <ifixitusa.com> website and the owner of the <ifixitusabusiness.com> website are related.
In response to the Panel’s Procedural Order No. 1, Sarkes Mkrdicichian stated that he has “controlling authority over IFIXITUSA LLC,” but denied having “controlling authority” over Combine Performance LLC. Complainant had submitted, with its initial Complaint document, an annex showing that. According to the Arizona Corporation Commission (“ACC”), the principal of Combine Performance is Sarkes Mkrdicichian. The ACC record annexed to the Complaint was evidently dated January 20, 2021, and the ACC record indicated that Combine Performance was an “inactive” corporation. In the absence of any explanation from Respondent, the Panel finds it more likely than not that the Mkrdicichian statement that he does not have “controlling authority” over Combine Performance LLC is meant to signify that Combine Performance LLC is no longer an active firm. In that sense, the denial of controlling authority would be technically true.
A review of the record, including the sometimes elusive statements from Respondent(s) about the Mkrdicichian-related entities, leads the Panel to conclude that all named Respondents are related and are essentially controlled by Sarkes Mkrdicichian. One instance of this legerdemain is the assertion in the initial Response that, because Liquid Cool was the party filing the TTAB cancellation suit against Complainant, Respondent IFIXITUSA LLC ‘s “not involved” in that lawsuit. That is a true statement, as far as it goes, but it is risible to suppose that IFIXITUSA, while not a named party, has no palpable stake in the outcome of that case. This shell-game approach has permeated this UDRP proceeding, and, indeed, it animates Respondent’s request that the two Domain Names at issue be considered in separate proceedings.
Respondent’s hyper-technical approach to issues such as consolidation here undermines Respondent’s credibility in general. This observation is necessary, as it will color the discussion below on the merits of this case.
Given the obvious similarity between the websites to which the two Domain Names resolve, and bolstered by the discussion above about the Mkrdicichian-related entities, the Panel concludes that consolidation of the two Domain Names in this single proceeding is warranted, and that no injustice will have been wrought in so doing. The Parties here are represented by counsel, who have had more than enough opportunity to make out their arguments.
7. Discussion and Findings – Merits
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(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
The Panel concludes that Complainant has rights in the trademark IFIXIT through registration demonstrated in the record. Respondent asserts that Complainant’s IFIXIT trademark registration is in jeopardy because of the TTAB cancellation proceedings discussed above. The Panel does not know how that case will turn out. In any event, two facts remain relevant for purposes of this UDRP proceeding. First, at this moment, Complainant’s IFIXIT mark registration is valid. Second, regardless of the registered status of the IFIXIT mark, Complainant has demonstrated common law rights in the IFIXIT trademark, certainly in connection with repair parts and manuals, through use demonstrated in the record.
The Panel also concludes that the Domain Names are confusingly similar to the IFIXIT mark. The Domain Names entirely incorporate the IFIXIT mark, and add the geographic descriptor “USA” and, in one instance, the word “business” The mark is clearly recognizable within the Domain Names, notwithstanding these additional terms.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. Respondent claims that it has been commonly known by the Domain Names, but has not provided any evidence of this.
Respondent does not assert that it is making a noncommercial or fair use of the Domain Names.
Respondent has indeed used the Domain Names to offer goods and services, but the question is whether such offerings have been bona fide. There is no question that Respondent is operating a legitimate business, but it appears to this Panel that the Domain Names are confusingly similar to Complainant’s IFIXIT trademark. The mark IFIXIT does not strike the Panel as particularly strong in terms of inherent distinctiveness, and it is conceivable that a third party could make a legitimate use of a mark that included the string “ifixit” plus other characters, if the area of commerce were sufficiently distant from Complainant’s core business – parts, tools, and repair manuals and kits. On the record here, it appears that the Parties’ areas of commercial activity are too similar to reach such a conclusion. Respondent insists that there is no overlap, and that may be largely true, but the Panel disagrees with the conclusion Respondent would draw from that fact. In the Panel’s view, someone aware of Complainant’s IFIXIT trademark and the goods purveyed under that mark (predominantly, it appears from the record, of use in connection with computers and electronic devices) would likely come to the incorrect conclusion that computers and computer-repair services offered under the IFIXITUSA mark are sourced to the entity selling wares under IFIXIT. The fact that one Party here repairs electronic devices and the other sells repair manuals and tools for electronic devices illustrates how proximate the Parties’ respective businesses are in the marketplace. In a loose sense, they are in some competition; a person or company with a defective computer might seek to avail itself of a repair service, or might opt to do the repair itself with the help of a manual.
In sum, on this limited record, the Panel concludes that Respondent lacks rights or legitimate interests vis-à-vis the Domain Names.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered or Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of 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 online 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 has registered and used the Domain Names in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section.
The Panel also concludes that Respondent more likely than not had Complainant and its IFIXIT mark in mind when registering the Domain Names. As noted above, Respondent’s principal states in an affidavit that he was unaware of Complainant’s IFIXIT mark as of August 25, 2016, the date on which the first Domain Name was registered. He also states that he “was aware of IFIXIT (Complainant), on August 25, 2016, but only as a small local California business that sold tools and repair guides.”
The Panel has difficulty accepting this statement. First, as noted above in the “Consolidation” discussion, Respondent’s credibility is in some doubt. Second, Complainant has provided a fair amount of evidence of its renown, as of August 2016, for offering computer and device repair tools and manuals under the IFIXIT mark. It strikes the Panel as unlikely that someone in Respondent’s position, i.e., a party about to go into the business of selling computers (and, later, repairing computers), would be unaware of Complainant’s trademark in the same field.
The Panel ultimately finds the issue, raised by Respondent, whether Complainant sells “computers” under the IFIXIT mark is a red herring, at least in this UDRP proceeding. There is little doubt that Complainant has established some renown for repair kits and tools, particularly in relation to computers and electronic devices.
With respect to bad faith use, the Panel finds that the websites to which the Domain Names resolve are clearly commercial in nature, and therefore the Panel concludes that Respondent’s use of the Domain Names constitutes bad faith use within the above-quoted Policy paragraph 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <ifixitusabusiness.com> and <ifixitusa.com> be transferred to Complainant.
Robert A. Badgley
Date: May 2, 2021