Prescription Dive Masks v. Professional Optical
Claim Number: FA0112000102718
Complainant is Prescription Dive Masks, San Diego, CA (“Complainant”). Respondent is Professional Optical, Texas City, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prescriptiondivemask.com>, registered with Domainregistry.com.
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 (the “Forum”) electronically on December 3, 2001; the Forum received a hard copy of the Complaint on December 3, 2001.
On December 6, 2001, Domainregistry.com confirmed by e-mail to the Forum that the domain name <prescriptiondivemask.com> is registered with Domainregistry.com and that Respondent is the current registrant of the name. Domainregistry.com has verified that Respondent is bound by the Domainregistry.com 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 December 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 2002 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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 the Respondent to the Complainant.
The disputed domain name <prescriptiondivemask.com> is confusingly similar to PRESCRIPTION DIVE MASKS, a mark in which Complainant holds rights.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent did not submit a Response in this proceeding.
Complainant is engaged in the business of creating custom dive masks fitted with prescription lenses. Complainant markets and sells its products throughout the world, and has identified itself as PRESCRIPTION DIVE MASKS since at least 1991. Complainant has been a member of the Diving Equipment & Marketing Association (“DEMA”) since February 1995, and has been an exhibitor in DEMA shows since at least 1993. Complainant has marketed itself extensively as PRESCRIPTION DIVE MASKS through imprinted pens and scratch pads and through advertising in at least one industry magazine, Scuba Times. Complainant has also promoted its products and services via the Internet at the domain name <prescriptiondivemasks.com> since November 1997.
All the above being assumed true, the Complainant does not allege that PRESCRIPTION DIVE MASKS has status as a common law trademark. There is no claim that this name is affixed as a mark to Complainant’s goods and serves to identify their source or origin and distinguish them from those manufactured or sold by others or that the company trade name is a mark which has acquired secondary meaning in the mind of the public as a source of specific products or services. A trademark serves as an adjective describing a specific kind of good or service and may be entitled to registration; a trade name (such as the name of a company) is a noun and cannot be registered as a trademark unless the trade name is affixed to and serves to distinguish specific goods or services and thus serves as a trademark. McCarthy on Trademarks, § 9.13. The Complainant does not allege use of its trade name as a trademark or service mark. Even were such the case, the Complainant’s company name cannot serve as a trademark because PRESCRIPTION DIVE MASKS describes a genus of competitive products and is thus generic. In re Advanced Spine Fixation Systems, Inc., 25 U.S.P.Q. 2d. 1363, 1364 (T.T.A.B. 1992).
Respondent registered the disputed domain name <prescriptiondivemask.com> on June 15, 2001, and has since used the domain name to direct users to its competing website hosted at <bdyes.com> (“Best Dive You’ll Ever See”). Several of Complainant’s clients have complained of confusion caused by the similarity between the disputed domain name and Complainant’s <prescriptiondivemasks.com> domain.
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 the 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.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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
The Complainant has failed to allege that it has a trademark or service mark in which it has rights. The Policy specifically speaks to and protects those who have rights in trademarks and service marks and does not speak to protection of trade names which are not used as trademarks or service marks. Since the Complainant has not proved or even alleged that it has rights in a trademark or a service mark which rights are infringed by Respondent’s registered domain name, Complainant has failed to prove that it has any interests which this Panel may or should protect.
Accordingly, since the Panel finds that Policy ¶ 4(a)(i) has not been satisfied, it is not necessary to decide whether the Complainant has satisfied Policy ¶ 4(a)(ii) or (iii).
The Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should not be granted.
Accordingly, based upon the facts alleged, it is Ordered that the <prescriptiondivemask.com> domain name not be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January, 19, 2002
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