When you file a UDRP be prepared to prove three points:
- The Respondent’s domain must be identical or confusingly similar to a mark in which the Complainant has rights.
- The Respondent must have no rights or legitimate interests in the domain name.
- The Respondent must have registered and used the domain in bad faith.
In a case involving the domains atlasgemstones.com and atlasrarecoins.com, the Complainant was Atlas Numismatics, Inc.
The UDRP seemed to favor the Complainant, but they proved only the first two of the points. In doing so, the Complainant asserted that there was a “conspiracy” by the Respondent, a competitor in the same business field, to damage the mark owned by the Complainant.
The sole panelist at the WIPO, W. Scott Blackmer, did not find any such evidence:
The Complainant has the burden of proof, and while it is reasonable to infer that a competitor would be motivated to use company and domain names similar to those of a better-known trader, the “Atlas” portion of the Complainant’s mark is not highly distinctive or renowned, and there are other, legitimate reasons for the Respondents to use “Atlas” in their names. The fact that the Respondents have apparently changed management or ownership while maintaining the same business and location does not prove that they mean to exploit the Complainant’s trademark (indeed there is no evidence that the Complainant is known except for its full mark, i.e., it is not referred to in shorthand by “Atlas”). In the absence of other evidence supporting the inference that the Respondents had the Complainant’s ATLAS NUMISMATICS mark in contemplation, the Panel does not find bad faith in the registration and use of the Domain Names.
Final decision: Deny transfer of the domains atlasgemstones.com and atlasrarecoins.com to the Complainant.
The domain transfer was denied.
Atlas Numismatics, Inc. v. C Alexander, Atlas Rare Coin Wholesale, Inc., Atlas Rare Coins, Inc., Christian Antonelli, Jason Sullivan, Atlas Collectibles, Inc. f/k/a Atlas Gemstones, Inc., Brandon Mizrahie
Case No. D2021-19201. The Parties
The Complainant is Atlas Numismatics, Inc., United States of America (the “United States”), represented by Law Offices of Armen R. Vartian, United States.
The Respondents are C Alexander, Atlas Rare Coin Wholesale, Inc., Atlas Rare Coins, Inc., Christian Antonelli, Jason Sullivan, Atlas Collectibles Inc. f/k/a Atlas Gemstones, Inc., Brandon Mizrahie, United States.
2. The Domain Names and Registrars
The disputed domain name (the first “Domain Name”) <atlasgemstones.com> is registered with eNom, LLC and the disputed domain name (the second “Domain Name”) <atlasrarecoins.com> is registered with Tucows Inc. (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2021. On June 18, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On June 18, 2021, the Registrars transmitted by email to the Center verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on June 22, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint or to file a separate Complaint for each of the Domain Names. The Complainant filed an amended Complaint on June 26, 2021.
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 the Respondent of the Complaint, and the proceedings commenced on July 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2021. The Respondent Brandon Mizrahie sent email communications on July 13, 29, and 31, 2021. The Center notified the Parties of the Commencement of Panel Appointment Process on July 22, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 28, 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.
4. Factual Background
The Complainant is a corporation established under the law of the state of New York and headquartered in Brooklyn, New York, United States. According to the Complaint, it has operated since 2013 as a rare coin dealership with a particular focus on world, ancient, and United States coins, with a website at “www.atlasnumismatics.com” linked to social media sites on Instagram, Twitter, and Facebook.
The Complainant cites an English dictionary definition of “numismatics” as “the study or collection of coins, tokens, and paper money and sometimes related objects (such as medals).”
The Complainant holds United States Trademark Registration Number 4606284 (registered on September 16, 2014) for ATLAS NUMISMATICS as a standard character mark.
The Registrars report respectively as follows:
– The Domain Name <atlasgemstones.com> was registered on July 30, 2016, by the Respondent Mr. Brandon Mizrahie, listing no organization and showing a postal address in Encino, California, United States.
– The Domain Name <atlasrarecoins.com> was registered on September 18, 2020, by the Respondent C Alexander, listing the organization as Atlas Rare Coin Wholesale, Inc. of El Segundo, California, United States.
Screenshots from the Internet Archive’s Wayback Machine show that the Domain Name <atlasgemstones.com> was used from 2016 for a website headed “Atlas Gemstones & Rarities” selling gold and other precious metals, gemstones, rare coins, and jewelry. In 2020 and 2021, the website listed the operator as Atlas Gemstones & Rarities, Inc., with a postal address in Hobrook, New York, United States.
The Complainant’s legal counsel sent a cease-and-desist letter in December 2020 to Jason Sullivan, the president of Atlas Gemstones, Inc., asserting that the online promotion of “Atlas Gemstones and Rarities” infringed the ATLAS NUMISMATICS mark and caused confusion, citing recent instances of confusion on the part of a consumer and a wholesale dealer. In January 2021, an attorney representing “Atlas Collectibles Inc. f/k/a [formerly known as] Atlas Gemstones Inc.” responded, denying confusing similarity but reporting that the company was in any event in the process of winding up its affairs. The Complainant attaches screenshots from the online database of the New York Division of Corporations listing the corporation Atlas Collectibles Inc., first incorporated on May 2, 2016, under the name Atlas Gemstones Inc.
The Respondent Mr. Mizrahie, the person who registered the Domain Name <atlasgemstones.com>, evidently did so at the behest of Mr. Sullivan. Mr. Mizrahie is affiliated with a web hosting company called pSek,LLC. On July 13, 2021, Mr. Mizrahie sent an email to the Center with the following message:
“The domain ‘atlasgemstones.com’ was registered by Jason Sullivan. Is he giving the ok to transfer this domain to another party? If so, I’m happy to comply. Jason was a web hosting client of ours and had registered some domain names through our enom account.”
Much of the former content of the website associated with the Domain Name <atlasgemstones.com>, including advertisements and blog posts, was copied to the website associated with the Domain Name <atlasrarecoins.com> in January 2021. That website, headed “Atlas Rare Coins”, listed the same postal address in Hobrook, New York but showed Christian Antonelli as the principal and owner of Atlas Rare Coins. Mr. Antonelli’s name was not new in connection with this business; his article about “Bullion” also appeared on the earlier website associated with the Domain Name <atlasgemstones.com>. The Atlas Rare Coins website featured a figurative logo appropriate to the mythological “Atlas”: a muscled titan with a stylized globe on his shoulders.
At the time of this Decision, the Domain Name <atlasgemstones.com> does not resolve to an active website. The Domain Name <atlasrarecoins.com> redirects to a website at “tristateassets.com/arci” headed “Tri-State Assets” (“the Tri-State website”) followed by this text: “Atlas Rare Coins, CA Rarities & Dirt Cheap Silver have joined forces.” This website does not otherwise identify the site operator, but the Better Business Bureau link on the website resolves to a profile of Atlas Rare Coins, Inc. The Tri-State Assets website advertises gold, silver, platinum, rare coins, and related supplies and resources. The postal address is the same location in Hobrook, New York as was previously given for Atlas Gemstones and Atlas Rare Coins.
The New York Division of Corporations database shows that Atlas Rare Coins, Inc. was incorporated on October 2, 2020 (there is no listing for “Atlas Rare Coin Wholesale, Inc.”).
The Complainant’s representative sent the Respondents Christian Antonelli and Atlas Rare Coins, Inc. a cease-and-desist letter on May 5, 2021, without response.
The status of the various Parties as the Respondents is discussed further below.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the Domain Names are confusingly similar to its registered ATLAS NUMISMATICS mark. The Complainant contends that the Respondents have no permission to use the mark and otherwise lack rights or legitimate interests in the Domain Names.
The Complainant argues that “[t]he domain names should be considered as having been registered and being used in bad faith because the domain names have been registered solely for the purpose of disrupting Complainant’s business and to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion between Complainant’s mark and Respondent’s website, or ‘initial interest confusion’ whereby customers seeking Complainant’s site end up purchasing from Respondents instead.”
The Complainant contends that the Respondents are interrelated and names as the Respondents not only the current registrants of the Domain Names but also Atlas Rare Coins, Inc., Christian Antonelli, Jason Sullivan, and Atlas Collectibles Inc. The Complainant offers as further evidence of bad faith the Respondents’ December 2020 assurances that the Respondents were closing their business, only to move the business in January 2021 to a website at the second Domain Name, which is even more closely focused on rare coins and consequently more competitive with the Complainant:
“Therefore, not only did Respondents begin to operate under a name confusingly similar to Complainant’s and then transfer their business to an even more confusingly similar name (‘Atlas Rare Coins’), but Respondents further attempted to mislead Complainant as to their business status in order to delay action by Complainant to protect its rights in the ‘Atlas Numismatics’ trademark.”
B. Respondents
The Respondents did not formally reply to the Complainant’s contentions, although Mr. Mizrahie sent some email communications to the Center, one of them on July 29, 2021 saying that he had renewed the Domain Name registration for <atlasgemstones.com> and expressing interest in “resolving” the issue.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the Domain Name are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
6.1 Preliminary Matter: Consolidation and Multiple Respondents
The Rules, paragraph 3(c), contemplate that a complaint may relate to more than one domain name, provided that the domain names are registered by the same person, while paragraph 10(e) also gives UDRP panels the authority to consolidate multiple domain name disputes. Where, as here, there are multiple respondents, panels consider 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”. Procedural efficiency is also a consideration in consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
Here, the Domain Names were registered a little more than four years apart, with two different Registrars, and the registrants differ. Mr. Mizrahie, who registered the first Domain Name, <atlasgemstones.com>, is the only person connected to any of the Respondents who has communicated with the Center concerning this proceeding. He is affiliated with a web hosting company and acted on instructions from a client, Mr. Sullivan, the president of Atlas Gemstones Inc., now Atlas Collectibles Inc. Mr. Mizrahie seems to be under the mistaken impression that Mr. Sullivan therefore “registered” that Domain Name. In fact, Mr. Mizrahie remains responsible for it under the ICANN-mandated terms of the registration agreement and the Policy, paragraph 2. The second Domain Name, <atlasrarecoins.com>, was registered by “C Alexander” of “Atlas Rare Coin Wholesale, Inc.” There is no evidence in the record or in the online database of the New York Division of Corporations concerning the existence of this individual or of any such entity.
However, there is ample evidence of a relationship between the Parties controlling the two Domain Names. The two Domain Names have been used to publish websites with much of the same exact advertising and informational content, as revealed by historical screenshots attached to the Complaint and recorded by the Internet Archive’s Wayback Machine. The postal address given for the website operator on the two websites as formerly published is the same, and Mr. Antonelli, who posted content on the website associated with the first Domain Name, <atlasgemstones.com>, was described as the principal of Atlas Rare Coins, Inc., the company shown as the operator of the website associated with the second Domain Name, <atlasrarecoins.com>. The website associated with the second Domain Name copied much of the content formerly found on the first, advertising a business operating at the same physical address, now under the name “Atlas Rare Coins”. Thus, there may have been a transfer of assets and change in management, but there appears to have been a continuation of the business, and Mr. Antonelli seems to have been involved before and after the change.
The facts in this case are intertwined. The parties have been notified and given the opportunity to come forward and clarify their respective roles and advance their claims and interests. As they have elected not to do so, the Panel does not find that they are prejudiced by consolidation of the Complainant’s UDRP claims. The Panel concludes that consolidation is in the best interest of equity and efficiency.
The Panel finds that the registrants of record are proper Parties to name as Respondents in the consolidated proceeding (Mr. Mizrahie, and C Alexander, Atlas Rare Coin Wholesale, Inc.), as well as the related Parties that factually appear to have been involved in registering, using, and deriving commercial benefit from the Domain Names: (a) Atlas Collectibles Inc. (the current incarnation of Atlas Gemstones Inc.) and its president Mr. Sullivan, and (b) Atlas Rare Coins, Inc. and its principal Mr. Antonelli. Collectively, all of these Parties are referred to hereafter as the “Respondents”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Complainant holds a trademark registration for ATLAS NUMISMATICS. The Domain Names both incorporate the distinctive element of the mark, “atlas”, in its entirety, which is sufficient to establish standing. The addition of dictionary terms in both Domain Names does not prevent a finding of confusing similarity. See id., section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.
Accordingly, the Panel finds that both Domain Names are confusingly similar to the Complainant’s registered ATLAS NUMISMATICS trademark for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Respondents have not come forward in this proceeding to assert rights or legitimate interests in the Domain Names, but the Panel cannot fail to observe the possible application of the Policy, paragraph 4(c)(i) and (ii) with respect to the Domain Names.
The Domain Name <atlasgemstones.com> was registered on July 30, 2016 by Mr. Mizrahie of the pSek web hosting company. He indicates that this was done for their client, Mr. Sullivan, the president of Atlas Gemstones, Inc. which was incorporated in May 2016. The Domain Name was in fact used for the business of that company, selling precious metals, gemstones, rare coins, and jewelry. Although neither Mr. Mizrahie nor Mr. Sullivan or Atlas Collectibles Inc. (formerly known as Atlas Gemstones, Inc.) submitted a Response with the required certification of accuracy and completeness under Rule 5(c)(viii), the evidence of incorporation from the New York State online database and the screenshots of the former website show use of the Domain Name in connection with a business known by a corresponding name, before the dispute arose between the Parties in December 2020. By 2018, however, according to the New York State database, the company name had been changed to Atlas Collectibles Inc. Although the website continued to display the name “Atlas Gemstones & Rarities”, there are no archived screenshots of the website dated after December 2020. A respondent’s rights or legitimate interests are normally assessed “with a view to the circumstances prevailing at the time of the filing of the complaint” (see WIPO Overview 3.0, section 2.11). The Complaint in this proceeding was filed in June 2021. Thus, it does not appear that any Respondent had rights or legitimate interests in a name corresponding to the Domain Name <atlasgemstones.com> at the relevant time.
The circumstances are different with respect to the Domain Name <atlasrarecoins.com>. Although the Panel finds no evidence of a legal entity named “Atlas Rare Coin Wholesale, Inc.”, the organization listed in the registration of that Domain Name (September 18, 2020), the New York State database shows that the Respondent Atlas Rare Coins, Inc. was incorporated shortly after, on October 2, 2020. Moreover, the Panel finds archived screenshots of the website associated with that Domain Name as early as November 25, 2020, before a dispute arose between any of the Parties, advertising rare coins and precious metals from “Atlas, the Leading Rare Coins dealer in the United States”. These facts could support a finding of legitimate interests for the Domain Name <atlasrarecoins.com> under the Policy, paragraph 4(c)(i) and (ii).
However, as in cases where a respondent claims rights or legitimate interests in a disputed domain name based on a trademark, there is also the possibility that the apparent rights or legitimate interests are pretextual and, in this case, that the company or business name was selected precisely to attack the Complainant’s trademark. See WIPO Overview 3.0, section 2.12. This would not represent a “legitimate” interest or “bona fide” offering of goods or services within the meaning of the Policy, paragraph 4(c). This issue is best weighed in tandem with the assessment of bad faith in the following section.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following on which the Complainant relies (in which “you” refers to the registrant of the domain name):
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant suggests that the Respondents are not only interrelated but engaged in a “conspiracy to infringe the Complainant’s trademark”. When they were discovered, they sought to lull the Complainant with a promise to discontinue using the <atlasgemstones.com> Domain Name, only to move their competing online business to an even more misleading Domain Name, <atlasrarecoins.com>. According to the Complainant, the Respondents’ motives were to disrupt the business of a competitor and misdirect consumers for commercial gain.
It is clear that the Complainant and the Respondents are competitors in buying and selling rare coins. Even without a Response, however, it is not clear that the Respondents are bent on attacking the Complainant’s ATLAS NUMISMATICS trademark.
There is no evidence in the record of any connection between the Complainant and the Respondents, such as former employment or ownership. The Complainant does not explain why any of the Respondents would have an animus against the Complainant or a particular reason to disrupt the Complainant’s business, which was only established three years before the Domain Name <atlasgemstones.com> was registered on July 30, 2016. As the Complaint observes, the Complainant’s focus is entirely on rare coins, whereas the Respondents’ business, especially in the beginning, concentrated more on gold, silver, gemstones, and jewelry.
There is no evidence in the record concerning the volume of the Complainant’s sales or its market recognition in 2016 or in 2020, when the Domain Name <atlasrarecoins.com> was registered. Thus, unlike cases involving highly distinctive and well-established trademarks, it is not obvious that the Respondents would have chosen the Domain Names for their trademark value, even assuming they were aware of the Complainant. “Atlas” is a dictionary word that is used for information resources about gems, coins, and investments. See, for example, “www.gematlas.com”, “The Coin Atlas Handbook” by Ian Carridine and Joe Cribb (Book Sales, 2000), “www.coin-atlas.com”, and “www.coinsatlas.com”. “Atlas” may also refer to the mythological figure often used to connote strength and global support, as reflected in the Respondents’ logo. Search engine queries and a perusal of online advertising and directories of coin dealers show that this is a crowded retail market, and several companies in the business use “atlas” in their names, including Antiques Atlas (“www.antiques-atlas.com”, buying and selling rare coins and medals since 1999), Atlas Coins, Atlas Coins and Jewelry, and Atlas Precious Metals. The additional term in the Complainant’s trademark, “numismatics”, is not featured in the Domain Names nor on the associated websites. The Respondents’ websites have concerned goods in addition to coins and have never mimicked the appearance of the Complainant’s website. Moreover, the Respondents have not used a logo imitative of the Complainant’s logo (a capital letter “A” at the bottom of a circle).
It is also significant that in both cases the Domain Names corresponded to company names that the Respondents actually incorporated and used for their businesses. There are occasionally instances where respondents have taken the trouble to obtain company names or trademarks confusingly similar to another party’s trademark as a pretext for using a corresponding domain name (see WIPO Overview 3.0, section 2.12). This is risky (especially in the same jurisdiction as the trademark holder), and it obviously entails considerably more cost and effort than simply registering a domain name. The commitment hardly seems warranted unless the third-party trademark is well-known (even if only in a specialty field) and likely to generate traffic, but there is little evidence of that here. In the Panel’s view, the Complainant has not made a compelling case that the Respondents incorporated and operated the companies Atlas Gemstones Inc. and Atlas Rare Coins, Inc. as part of a purported “conspiracy” to attract consumes looking for ATLAS NUMISMATICS.
The Complainant has the burden of proof, and while it is reasonable to infer that a competitor would be motivated to use company and domain names similar to those of a better-known trader, the “Atlas” portion of the Complainant’s mark is not highly distinctive or renowned, and there are other, legitimate reasons for the Respondents to use “Atlas” in their names. The fact that the Respondents have apparently changed management or ownership while maintaining the same business and location does not prove that they mean to exploit the Complainant’s trademark (indeed there is no evidence that the Complainant is known except for its full mark, i.e., it is not referred to in shorthand by “Atlas”). In the absence of other evidence supporting the inference that the Respondents had the Complainant’s ATLAS NUMISMATICS mark in contemplation, the Panel does not find bad faith in the registration and use of the Domain Names.
The Panel concludes that the Complainant has not established the third element of the Complaint.
It is likely, then, that certain Respondents could also be found to have rights or legitimate interests with respect to the Domain Name <atlasrarecoins.com> under the second element of the Complaint, as discussed in the previous section, but such a conclusion is rendered unnecessary given the conclusion under the third element. Moreover, to fully decide on this matter, a fuller exchange of evidence would be required – a role better suited for a court.
7. Decision
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: August 11, 2021
