Novamedia Services v. Zabadoo.com AG
Claim Number: FA0112000102821
The Complainant is Novamedia Services, Amsterdam, NETHERLANDS (“Complainant”). The Respondent is Zabadoo.com AG, Eschen, LIECHTENSTEIN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwgoodlot.com>, <goodlott.com>, <goodlott.org>, <goodlott.net>, <godlot.com>, registered with Tucows.
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.
M. Scott Donahey, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 12, 2001; the Forum received a hard copy of the Complaint on December 20, 2001.
On December 12, 2001, Tucows confirmed by e-mail to the Forum that the domain names <wwwgoodlot.com>, <goodlott.com>, <goodlott.org>, <goodlott.net>, <godlot.com> are registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 17, 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 email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
A timely Response was received and determined to be complete on January 15, 2002.
On January 31, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. Scott Donahey as Panelist.
As the Response contained trademark documents in the Dutch language without translation and as the Response objected to the use of such documents, the Panel gave the Respondents until February 21, 2002 to submit the translation of such documents.
On February 11, 2002, the Panel received by facsimile from the National Arbitration Forum a translation of one of the seven documents that had been submitted in Dutch.
On February 25, 2002, the Respondent requested that it be allowed to respond to this translated document and permission was granted.
On February 27, 2002, the Panel received the Response Addition.
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
Complainant contends that Respondent has registered domain names that are identical or confusingly similar to Complainant's trademark, that Respondent has no rights or legitimate interests in respect of such domain names, and that Respondent, a competitor of Complainant, is seeking commercial gain by confusing user as to the source of services provided.
Respondent contends that Good and lot are generic words and that Goodlott relates specifically to lotteries, the field of business in which Respondent operates, that by adding "www" when entering the domain name to resolve to a web site, the domain name becomes different from Complainant's trademark, and that the domain name <godlot.com> uses the word "god" rather than "good." Respondent further contends that since Complainant has submitted trademark documents in the Dutch language, Respondent is unable to comment on these.
C. Additional Submissions
Respondent submitted an English translation of a letter dated July 25, 2001, which referenced an application to the United States Patent Office for the trademark GOODLOT made on 30 April 2001.
In its Response Addition, the Respondent notes that this is not a trademark registration, but a letter referencing a trademark application. Respondent asserts that reference to the United States Patent and Trademark Office ("USPTO") web site shows that the registration process is still ongoing and that no registration has issued.
By visiting the USPTO, the Panel has confirmed that no trademark registration has issued.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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.
The Panel has given Complainant every opportunity to establish by competent evidence that it is the owner of a registered trademark. As Complainant is a Netherlands company, rights in a trademark are established by registration, and not by use. Complainant chose to submit an English translation of only one of the seven documents that were submitted in Dutch. That document does not establish registration of the trademark GOODLOT. A visit to the USPTO web site confirmed that registration for the trademark GOODLOT has not issued. No evidence was submitted as to any of the other claimed marks.
While it appears that Complainant might well be able to establish trademark rights, it has failed to do so in compliance with the Policy and the Rules. This Panel is bound by that Policy and those Rules. Accordingly, the Complaint must be dismissed for failure to establish rights in the marks claimed.
Because Complainant has failed to establish rights to any of the marks claimed, Complainant's Complaint is hereby dismissed.
M. Scott Donahey, Panelist
Dated: February 28, 2002
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