National Arbitration Forum
Susan Gonzales d/b/a Natural
Edge v. Philip Ancevski
Claim Number: FA0711001112123
Complainant is Susan Gonzales d/b/a Natural
Edge (“Complainant”), represented by James B. Belshe, of Workman Nydegger, 1000
Eagle Gate Tower, 60 East South Temple, Salt Lake City, UT 84111. Respondent is Philip Ancevski (“Respondent”), represented by Ari
Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry
Hill, NJ 08003.
DISPUTED DOMAIN NAME
The domain name at issue is <naturaledge.com>, registered with Godaddy.com,
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.
Hon. Carolyn M. Johnson (Ret.), Diane Cabell,
Esq., and James A. Carmody, Esq., (Chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 20, 2007; the National
Arbitration Forum received a hard copy of the Complaint on November
On November 21, 2007, Godaddy.com, Inc confirmed by e-mail to the
National Arbitration Forum that the <naturaledge.com> domain name is
registered with Godaddy.com, Inc and that
the Respondent is the current registrant of the name. Godaddy.com,
Inc has verified that Respondent is bound by the Godaddy.com, 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 December 12, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of January 2, 2008 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 by e-mail.
31, 2007, Respondent requested an extension of twenty (20) days in
which it could file a timely Response pursuant to NAF Supp. Rule 6. On January 2, 2008, the National Arbitration
Forum granted Respondent’s request, and extended the Response deadline to January 14, 2008.
A timely Response was received and determined to be complete on January
On January 23, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Hon. Carolyn M. Johnson (Ret.), Diane
Cabell, Esq., and James A. Carmody, Esq., (Chair) as Panelists.
Complainant requests that the domain name be transferred from
Respondent to Complainant.
1. Respondent’s <naturaledge.com> domain, the domain name at issue, is
confusingly similar to Complainant’s NATURAL EDGE
does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and has used the domain
name at issue in bad faith.
1. Respondent does not dispute
that the domain name at issue is identical or confusingly similar to
Complainant’s NATURAL EDGE mark
but claims that registration of the <naturaledge.com>
domain preceded any common law or other rights which Complainant may have or
have had in its mark.
2. Respondent claims that it has rights and
legitimate interest in the domain names at issue because it was registered
prior to registration of Complainant’s mark with the USPTO, prior to creation
of a common law trademark and without Respondent’s actual knowledge of Complainant’s
use of NATURAL EDGE in commerce.
3. Respondent denies that the
domain name at issue was registered or has been used in bad faith.
Complainant claims to have been using the NATURAL EDGE
mark in the United States
and around the world since 2003 and to have invested substantially in the mark
associated with the goods and services marketed under the NATURAL EDGE
brand name. As a result, says
Complainant, the NATURAL EDGE trademark, together with Complainant’s
business name and reputation, has become synonymous with quality products and,
accordingly, Complainant has built up considerable goodwill in the minds of
consumers in connection with the NATURAL
EDGE mark. Complainant has provided no specifics or proof
of these claims by way of an affidavit, advertising samples or any other
evidence of the existence of a common law trademark in NATURAL EDGE at any point in time. Complainant filed to register the NATURAL EDGE
trademark with the U.S. Patent and Trademark Office on May 8, 2004 and claimed
first use in commerce in early 2003.
Ultimately, Complainant was granted registration on May 2, 2006, under
the Registration Number 3,088,528.
Complainant has not licensed or otherwise permitted
Respondent to use the NATURAL EDGE
trademark or to register or use the domain name at issue. As of November 20, 2007, the website associated
with <naturaledge.com> was a
parking site with links to other websites advertising sale and acquisition of
Respondent registered the domain name at issue on February 13, 2004,
prior to even the application of Complainant to register the NATURAL EDGE mark
with the USPTO. Respondent denies any
knowledge of Complainant’s use of the mark as of that date and there is no
evidence to the contrary.
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
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
Complainant has not established
common law rights in the NATURAL EDGE
mark pursuant to Policy ¶ 4(a)(i) prior to its
trademark application filed on May 8, 2004. It is not disputed that Respondent
registered the domain name at issue on February 13, 2004. Complainant has provided no evidence of the
fame or notoriety of its mark dating back to 2003 as claimed in its USPTO
application for NATURAL EDGE. Therefore, Complainant’s common law trademark
claims have no evidentiary basis. Thus Complainant
has failed to establish common law rights in the NATURAL EDGE mark pursuant to
Policy ¶ 4(a)(i).
See Voip Review LLC v. Nokta Internet Techs., FA 1095192 (Nat. Arb.
Forum Dec. 12,
2007) (“Complainant has not sufficiently established common law
rights in the VOIP REVIEW mark and merely makes bald assertions as to its
rights in the mark without offering any evidence to support those
assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that
the complainant failed to establish common law rights in its mark because mere
assertions of such rights are insufficient without accompanying evidence to demonstrate
that the public identifies the complainant’s mark exclusively or primarily with
the complainant’s products). There is no
evidence whatsoever that Complainant had common law or other rights in the
NATURAL EDGE mark at the time of
registration of the domain name at issue.
the Panel finds that the Complainant has failed to satisfy Policy ¶ 4(a)(i).
Complainant has failed to satisfy the first element of the Policy, it is not
necessary for the Panel to decide the remaining two elements.
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
James A. Carmody, Esq., (Chair)
Hon. Carolyn M. Johnson (Ret.)
Diane Cabell, Esq.
Dated: February 8, 2008
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