ABC, Inc. v Genious, Inc.
Claim Number: FA0202000104582
The Complainant is ABC, Inc. (“Complainant”) represented by Ron Tavakoli, Esquire, of Law Offices of Roshan-Zamir & Tavakoli, LLP. The Respondent is Genious, Inc., Marbella (“Respondent”) represented by Howard M. Neu, Esquire, of Law Offices of Howard M. Neu, P.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheerleaders.com>, registered with Tucows, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.
Bruce E. Meyerson, M. Kelly Tillery and M. Scott Donahey as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 11, 2002; the Forum received a hard copy of the Complaint on February 11, 2002.
On February 12, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <cheerleaders.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 February 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 12, 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.
A timely Response was received and determined to be complete on March 12, 2002.
On March 26, 2002 pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Bruce E. Meyerson, M. Kelly Tillery and M. Scott Donahey as Panelists.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant contends that it acquired the domain name <cheerleaders.com> on or about January 6, 2001 but it was transferred Respondent through a mistake of the Registrar on or about October 24, 2002. Complainant contends that it “started using the domain name” on January 6, 2001 and “soon thereafter started providing pornographic content.” On or about November 14, 2001, Complainant filed an Application with the U.S. Patent and Trademark Office for the mark “Cheerleaders.com.” The Complainant contends that its “use of the domain name constitutes [a] common law trademark and/or service mark.”
Respondent claims to have properly acquired the domain name on November 9, 2001 and to have utilized it continuously since then. Respondent denies the allegation that the domain name was mistakenly transferred to it. Respondent contends that the name “cheerleaders” is a common generic word and has not been trademarked by Complainant. Respondent claims to have a legitimate interest in the domain name and asserts that it has spent substantial funds developing it into an active site portraying cheerleaders in sexually explicit poses.
Complainant filed for a U.S. trademark for the mark “Cheerleaders.com” on or about November 14, 2001. Respondent acquired the domain name on or about November 9, 2001 and has used the domain continuously since that time. Prior to the filing of the Complaint in this matter, Respondent had no knowledge of the existence of the Complainant or any trademarks claimed to be owned by Complainant.
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.
Identical and/or Confusingly Similar
Complainant has failed to establish that it has “rights” in the mark “cheerleaders.com.” First, Complainant’s Trademark Application itself does not create “rights” within the meaning of Policy 4(a).
Second, the claimed mark is generic and therefore no one has exclusive rights over <cheerleaders.com>. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001); see generally R. Badgley, Domain Name Disputes § 2.04[A] (2002 ). Moreover, even if the domain name could be considered descriptive, Complainant has failed to demonstrate that the term has acquired a secondary meaning. See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001).
Because Complainant has not proven that it has rights in the claimed mark as required by Policy 4(a)(1), we find it unnecessary to consider whether the Complainant has proven the additional required elements of Policy 4(a)(2) and (3).
In accordance with the foregoing, the Complaint is dismissed.
Bruce E. Meyerson
M. Kelly Tillery
M. Scott Donahey, Panelists
Dated:April 12, 2002
 The Record fails to support Complainant’s contention that the domain name was mistakenly transferred to Respondent. If that were true, Complainant’s remedy must be found, if at all, against the Registrar, not in these proceedings.
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