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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yost Properties LLC v. Viralt-shirts.com

Case No. D2008-1776

1. The Parties

The Complainant is Yost Properties LLC, Salem, Oregon, United States of America, represented by Foster Pepper LLP, United States of America.

The Respondent is Viralt-shirts.com, Salem, Oregon, United States of America, self-represented.

2. The Domain Name and Registrar

The disputed domain name <rogeryost.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2008. On November 18, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 18, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing a registrant name for the disputed domain name that differed from the named Respondent in the Complaint. The Center sent an email communication to the Complainant on November 28, 2008 providing the correct registrant name disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 2, 2008. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2009. The Response was filed with the Center on December 17, 2008.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on January 15, 2009. 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 has provided evidence of registration by the Secretary of State of Oregon, Corporation Division, of the word service mark ROGER YOST in connection with the “Leasing of Commercial and Multi-Family space”, registry number S40672, dated November 10, 2008. Said registration asserts a date of first use of January 1, 1978 (Complaint, Exhibit 4). “Yost Properties LLC” is registered to do business in the state of Oregon, registry number 514405-93, registry date April 18, 2008 (id., Exhibit 3).

According to Complainant, Yost Properties LLC, and its predecessors in interest have bought, sold and leased commercial property in the Salem, Oregon area for 31 years. “Roger Yost” is an individual who is manager of this business. Properties owned by Mr. Yost through Complainant or its affiliates include the Capital Center Building and Reed Opera House in Salem, Oregon.

According to the Registrar’s verification report, Respondent is registrant of the disputed domain name <rogeryost.com>. According to that report, the record of registration of the disputed domain name was created on October 1, 2008. The administrative contact for Respondent named in the record of registration is “Ron Lee” of Salem, Oregon. There is substantial evidence on the record of this proceeding to indicate that Ron Lee is the beneficial owner of the registration of the disputed domain name.

Because Complainant does not meet the threshold requirement of ownership of a trademark or service mark, the Panel elects to follow the principle of administrative economy and makes its determination in this proceeding without elaborating upon the claims and counterclaims of the parties with respect to Respondent’s registration and use of the disputed domain name.

The Registration Agreement in effect between Respondent and GoDaddy.com, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges ownership of the service mark ROGER YOST on the basis of the activities of the real estate investment and services enterprise, Yost Properties LLC, and its affiliates, and the services of Mr. Yost, as their manager. Complainant argues that through the ownership of several prominent buildings in Salem, Oregon “the service mark �Roger Yost’ has become distinctive in being the source of high quality, high volume, commercial real estate sales and leasing opportunities”. Complainant further states, “The service mark Roger Yost is intricately connected with the reputation of Yost Properties, LLC, and all of its affiliates. Clients of Yost Properties LLC engage in business with Yost Properties LLC due to its association with the service mark Roger Yost”.

Complainant argues that the disputed domain name is identical or confusingly similar to the “registered service mark” in which Complainant has rights “because the Domain Name includes the identifying �Yost’ portion of the entity’s name while the omitted �Properties’ portion of the entity’s name is the portion that merely indicates the area of business activity of the complainant…”

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not a licensee of Complainant or otherwise authorized to use its mark, Respondent is not commonly known by the disputed domain name, and Respondent does not conduct legitimate business of any kind in connection with the disputed domain name. Complainant further argues that Respondent has made no preparations for a bona fide offering of goods or services using the disputed domain name.

Complainant argues that Respondent is not making legitimate noncommercial or fair use of the disputed domain name because he is using it to “misleadingly divert consumers from engaging in business with Complainant … and is attempting to tarnish the service mark at issue”.

Complainant contends that Respondent registered and used the disputed domain name in bad faith with the specific intent to disrupt Complainant’s business, and to prevent Complainant from registering the disputed domain name. Complainant further argues that the Panel may infer that Respondent registered the disputed domain name with the intent of selling it to Complainant.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent contends that Complainant does not own service mark rights in the term “roger yost” because that term refers to an individual who is a well-known public figure in the Salem, Oregon community. Respondent further alleges that Complainant’s actual real estate business is operated under the name “Q&A Properties”. Respondent argues that Complainant has failed to present any evidence that Complainant has done business under the service mark ROGER YOST.

Respondent argues that Complainant filed an application for registration of his name as a service mark subsequent to Respondent’s registration of the disputed domain name, indicating that Complainant’s application for service mark registration was undertaken for the opportunistic purpose of pursuing this proceeding.

Respondent indicates that he has rights or legitimate interests in the disputed domain name because he is using it for purposes of expressing opinions, including concerning the individual, Roger Yost, a public figure. Respondent argues that Complainant is essentially presenting a libel or slander case in the guise of a service mark proceeding, and that litigation for libel or slander would be better pursued in the courts.

Respondent argues that he registered the disputed domain name for the purpose of commenting on a public figure, and that such action is not in bad faith. Respondent alleges that he did not register the disputed domain name to sell the disputed domain name to Complainant or for any other bad faith purpose.

Respondent requests the Panel to reject Complainant’s request for the Panel to direct the Registrar to transfer the disputed domain name.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

Respondent received Notification of Complaint and commencement of the administrative proceeding from the Center and filed its Response in a timely manner. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has asserted service mark rights in the term “roger yost”. Complainant has not provided any documentary evidence of use of the term “roger yost” as a service mark in commerce, with the exception of a service mark registration document filed with the Oregon Secretary of State Corporation Division on November 10, 2008.

Complainant has made no argument concerning the legal effect of service mark registration in the state of Oregon. No argument has been made that such registration establishes a presumption of validity of the service mark designated on the filing.

Respondent has argued that Complainant has not used the term “roger yost” as a service mark in commerce, noting that Complainant has provided no evidence of such use. Complainant does not appear to enjoy any presumption of service mark validity based on its filing in Oregon. Even if it did enjoy such a presumption, it would be required to rebut Respondent’s challenge by a showing of evidence of use in commerce. Complainant has not furnished any such evidence.

This panelist, either as sole panelist or as part of a three-member panel, has addressed in a number of administrative proceedings under the Policy the hurdles that must be overcome for an individual to establish service mark rights in a personal name. See, e.g., Marvin Lundy and Law Offices of Marvin Lundy, LLP v. Scott E. Diamond, WIPO Case No. D2001-1327; Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, WIPO Case No. D2002-1073; Charles Rapier v. Dark Moon Management, WIPO Case No. D2004-0221; Fields for Senate v. Toddles Inc., WIPO Case No. D2006-1510; Laughton Marketing LLC v. Boris Soposki, WIPO Case No. D2008-0718. A number of the aforementioned proceedings have involved complex questions, for example, regarding whether particular activities undertaken by the individual claiming service mark rights constituted services within the meaning of trademark law (see Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, WIPO Case No. D2002-1073). No such complex questions are presented here.

Complainant has not presented any documentary evidence of use in commerce of the personal name argued to constitute a service mark. There is no persuasive basis in the provided record upon which the Panel might reasonably determine that Complainant has established service mark rights in ROGER YOST in the present proceeding.

Because Complainant has failed to establish rights in a trademark or service mark, it cannot succeed in this administrative proceeding. The Panel refrains from addressing other issues.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Frederick M. Abbott
Sole Panelist

Dated: January 29, 2009