national arbitration forum




eSpindle Learning v. Sal Morale

Claim Number: FA0706001010427



Complainant is eSpindle Learning (“Complainant”), represented by Roswitha Warda, of eSpindle Learning, P.O. Box 338, Sebastopol, CA 95472.  Respondent is Sal Morale (“Respondent”), 1508 Bay Road, Miami Beach, FL 33707.



The domain name at issue is <>, registered with Go Daddy Software, Inc.



The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.


James A. Carmody, Esq., as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 18, 2007.


On June 18, 2007, Go Daddy Software, Inc., confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").


On June 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 16, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to by e-mail.


Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.


On July 20, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.


Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A.  Complainant makes the following assertions:


1.      Respondent’s <> domain name is identical to Complainant’s WORD CUP mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


B.  Respondent failed to submit a Response in this proceeding.



Complainant, eSpindle Learning, is a non-profit educational organization endeavoring to promote verbal skills and the development of vocabulary.  In January 2007, Complainant began to explore the idea of an international, free, online vocabulary competition, calling it “Word Cup.”  Through the development process, Complainant solicited sponsoring organizations and Internet partners and also filed a trademark application with the United States Patent and Trademark Office (“USPTO”) for the WORD CUP mark (Serial No. 77/102314 filed Feb. 8, 2007).


Respondent registered the <> domain name on August 31, 2001.  Respondent’s domain name currently resolves to a website advertising “The Second Annual WordCup™ Tournament” along with various “of the Day” features, including words, quotes, articles, and historical events.



Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."


In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).


Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:


(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(3)   the domain name has been registered and is being used in bad faith.


Identical and/or Confusingly Similar


Complainant contends it holds rights in the WORD CUP mark through its trademark application filed with the USPTO in February 2007.  Repeatedly, however, panels have found that a pending trademark application alone is insufficient to establish rights in a mark under Policy ¶ 4(a)(i).  See Computer Nerds Int’l, Inc. v. Ultimate Search, FA 155179 (Nat. Arb. Forum June 23, 2003) (“Complainant's pending trademark applications do not establish its rights in the mark pursuant to Policy 4(a)(i).”); see also Not My Kid, Inc. v. Sawchak, FA 167978 (Nat. Arb. Forum Sept. 23, 2003) (finding that the complainant’s proffered evidence of a pending service mark application with the United States Patent and Trademark Office for its mark was insufficient to establish rights in the mark under the Policy).  As explained by the panel in Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001), “[c]omplainant's pending applications do not establish any enforceable rights until registration issues.”  Therefore, the Panel finds Complainant cannot be considered to have established rights in the WORD CUP mark under Policy ¶ 4(a)(i) through its currently pending application with the USPTO.


The Policy does not mandate registration with a trademark authority as the only means of establishing rights in a mark under Policy ¶ 4(a)(i).  Common law rights can be established in a mark provided sufficient evidence is supplied by the complainant to show that a mark has obtained secondary meaning.  See Artistic Pursuit LLC v., FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).  Complainant asserts it has significantly extended itself in solicitation of sponsors and partners for the WORD CUP competition.  However, upon examination of the record, the Panel finds Complainant has not tendered sufficient evidence as to the extensiveness of the WORD CUP mark for the Panel to conclude Complainant has established common law rights in the WORD CUP mark pursuant to Policy ¶ 4(a)(i).  See Molecular Nutrition, Inc. v. Network News and Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (approving of and applying the principals outlined in prior decisions that recognized “common law” trademark rights as appropriate for protection under the Policy “if the complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant's goods or services”); see also TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”). 


Even if Complainant were to supply this Panel with additional evidence demonstrating rights in the WORD CUP mark since inception and development of the mark in early 2007, Complainant is still unable to overcome the temporal disparity between when Respondent first registered and used the <> domain name in August 2001 and the genesis of Complainant’s WORD CUP vocabulary competition concept in January 2007.  Respondent’s registration and use of the domain name at issue predates Complainant’s conception, development, and trademark filing for the WORD CUP mark by almost six years.  Panels have repeatedly found that a complainant’s rights in a mark must precede registration and use of the disputed domain name in order to satisfy Policy ¶ 4(a)(i).  See B&V Assocs., Inc. v. Internet Waterway, Inc., FA 147531 (Nat. Arb. Forum Apr. 15, 2003) (“[T]he Policy . . . was intended to protect against infringement of existing trademark rights by identical or confusingly similar domain name registrations.  Therefore, the Panel concludes that Policy ¶ 4(a)(i) assumes that Complainant's rights must predate Respondent's domain name registration . . .”); see also Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that the complainant may have in its common law mark did not predate the respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied); see also Transpark LLC v. Network Adm’r, FA 135602 (Nat. Arb. Forum Jan. 21, 2003) (finding that the complainant failed to satisfy Policy ¶ 4(a)(i) because the respondent's domain name registration predated the complainant’s rights in its mark by nearly two years).


Based on the foregoing, the Panel concludes Complainant has failed to satisfy Policy ¶ 4(a)(i).


Rights or Legitimate Interests


When Complainant fails to satisfy one or more of the three necessary elements of Policy ¶ 4(a), the Panel may forgo analysis on the remaining elements.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Occidental Hoteles Mgmt., S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (deciding not to inquire into the remaining elements of the Policy where the complainant could not satisfy Policy ¶ 4(a)(i)).  In light of Complainant’s failure to satisfy Policy ¶¶ 4(a)(i), supra, and (iii), infra, the Panel declines to consider whether Complainant proffered any evidence demonstrating Respondent’s lack of rights or legitimate interests in the <> domain name under Policy ¶ 4(a)(ii).


Registration and Use in Bad Faith


Nevertheless, even if Complainant had proffered sufficient evidence of secondary meaning associated with the WORD CUP mark to establish requisite rights under Policy ¶ 4(a)(i), Policy ¶ 4(a)(iii) requires Complainant to prove the <> domain name was registered and is being used in bad faith.  Commenting on the examples of bad faith use set forth in Policy ¶¶ 4(b)(i)-(iv), the panel in BNP Paribas v. Simon Sheppard, D2007-0091 (WIPO Mar. 23, 2007), emphasized that “[t]he examples of bad faith set forth in the Policy have at least one element in common: all of them effectively require that the respondent, at the time the domain name was registered, directly or indirectly harbored an intent that related in some manner to the complainant or its trademark.” (emphasis added).


The Panel finds that, in light of Respondent’s registration of the <> domain name nearly six years prior to Complainant’s conception, development, and subsequent trademark application filing of the WORD CUP mark, Respondent could not have registered the disputed domain name with the requisite bad faith under Policy ¶ 4(a)(iii).  See Reid v. Chao, FA 154587 (Nat. Arb. Forum May 29, 2003) (finding that the respondent could not have registered the disputed domain name in bad faith where its registration came months before the complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the panel); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant); see also It Takes 2 v. C.,J., FA 384923 (Nat. Arb. Forum Feb. 15, 2005) ("[I]n the absence of any evidence of knowledge on the part of Respondent of Complainant, its mark or its services at the time Respondent acquired the domain name, the Panel finds Complainant has failed to establish registration in bad faith.").


Therefore, the Panel concludes Complainant has failed to meet its burden under Policy ¶ 4(a)(iii).



Due to Complainant’s failure to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.



James A. Carmody, Esq., Panelist

Dated:  July 30, 2007



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