Streetfire,
Inc. v. CKV c/o Domain Admin
Claim Number: FA0709001079950
Complainant is Streetfire, Inc. (“Complainant”), represented by David
A.W. Wong, of Barnes & Thornburg LLP,
The domain names at
issue are <streetfire.com> and <streetfires.com>,
registered with Nameview, Inc.
The undersigned
certify that they have acted independently and impartially and to the best of
their knowledge have no known conflicts in serving as Panelists in this
proceeding.
David
A. Einhorn (Chairperson), David E. Sorkin and Hon. Ralph Yachnin as Panelists.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on September 17, 2007; the National Arbitration
Forum received a hard copy of the Complaint on September
18, 2007.
On September 26, 2007, Nameview, Inc. confirmed by e-mail to the National Arbitration
Forum that the <streetfire.com> and <streetfires.com>
domain names are registered with Nameview,
Inc. and that the Respondent is the current registrant of the
names. Nameview,
Inc. has verified that Respondent is bound by the Nameview, 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 September 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 18, 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 postmaster@streetfire.com and postmaster@streetfires.com by e-mail.
A timely Response was received and determined to be complete on October 18, 2007.
A timely Additional
Submission was received from Complainant and determined to be complete on
October 24, 2007.
A timely Additional
Submission was received from Respondent and determined to be complete on
October 30, 2007.
On October 31, 2007, pursuant to Respondent’s request to have the dispute
decided by a three-member Panel, the National Arbitration Forum appointed David
A. Einhorn, David E. Sorkin and Hon. Ralph Yachnin as Panelists.
Complainant requests
that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following assertions:
1. Complainant owns common law rights to the STREETFIRE trademark. Complainant further contends that Respondent’s <streetfire.com> and <streetfires.com> domain names are confusingly similar to Complainant’s mark.
2. Complainant contends that Respondent does not have any rights or legitimate interests with respect to the <streetfire.com> and <streetfires.com> domain names.
3. Complainant contends that Respondent registered and used the <streetfire.com> and <streetfires.com> domain names in bad faith.
B. Respondent
Respondent contends that Complainant has not established that it had common law rights in the term “street fire” predating the time Respondent registered the disputed domains. Respondent further argues that it did not register the disputed domains with Complainant’s alleged trademark in mind, had no knowledge of Complainant, or of Complainant’s business, its web site or its trademarks, when it registered them, and that Complainant has proffered no evidence to the contrary.
C. Additional Submissions
The Panel has reviewed the parties' Additional Submissions and has determined that they do not contribute further substance to these issues. Furthermore, in the view of a portion of the Panel, neither party has demonstrated the existence of any exceptional circumstances that would warrant consideration of additional submissions.
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 in this matter is of the opinion that the failure of
Complainant to demonstrate that its trademark rights arose prior to the
registration of Respondent’s domain names means that Complainant cannot prevail
under ¶ 4(a)(i) and/or ¶ 4(a)(iii) of the Policy.
On the record before us, Complainant has demonstrated the existence of
neither registered nor common law rights to the STREETFIRE mark predating
Respondent’s registration of <streetfire.com>
in August 2001. Nor has Complainant
sufficiently demonstrated such rights as of Respondent’s registration of <streetfires.com> in July
2005. To establish that a common law
trademark has been imposed, Complainant must show that the mark has achieved
secondary meaning or association with Complainant. See
Australian
Trade Comm’n v. Reader,
D2002-0786 (WIPO Nov. 12, 2002). The
Complaint has not done so to the satisfaction of this Panel. Several Forum decisions have found that to
satisfy the requirements of ¶ 4(a)(i), the complainant
party must have had trademark or service mark rights before the domain name in
dispute was registered. See, e.g., Anthony L.
Trujillo & Planetfone, Inc. v. 1Soft Corp., FA 171259 (Nat. Arb.
Forum Sept. 10, 2003), Intermark
Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19,
2003), Bus. Architecture
Group, Inc. v. Reflex Publ’g., FA 097051 (Nat.
Arb. Forum June 5, 2001).
Two Panelists would rule for Respondent on this basis alone.
Further, this Panel is unanimously of the view that, given the absence
of any demonstrated trademark rights owned by Complainant at the time
Respondent registered the domain names, Respondent could not have registered
the domain names in bad faith as required by ¶ 4(a)(iii). See
Aspen Grove, Inc. v. Aspen Grove, D2001-0798
(WIPO Oct. 5, 2001). Paragraph 4(b) of
the Policy provides examples of the kind of conduct that constitutes bad faith
registration. Those examples include
preventing the Complainant from registering domain names containing its mark,
registering the domain name to disrupt the Complainant’s business, or registering
the domain name to divert Internet users from the Complainant’s web site to the
Respondent’s web site. None of these
examples could possibly be met if the Complainant had no trademark rights at
the time the domain name was registered.
See Interep Nat'l Radio Sales, Inc. v. Internet
Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith
where the respondent registered the domain prior to the complainant’s use of
the mark); 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).
Furthermore, even if Complainant had acquired rights in its claimed mark
by July 2005, Respondent’s interest in and registration of <streetfires.com> at that time was much more likely to have
been motivated by the fact that it had already registered <streetfire.com> four years earlier rather than by any
connection to Complainant or its mark.
The 2005 registration of <streetfires.com>
therefore was not in bad faith regardless of any trademark rights that
Complainant may have acquired by that time.
Thus, the Panel has determined that the Complainant has not satisfied the requirements of Policy ¶ 4(a).
As Complainant has failed to establish the requirements of Policy ¶
4(a), Complainant’s requested relief is hereby DENIED.
David
A. Einhorn, Presiding Panelist
Hon.
Ralph Yachnin, Panelist
David
E. Sorkin, Panelist
Dated: November 15, 2007
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