Spinestudios, Inc. d/b/a SPINE3D v. HowardModels.com
Claim Number: FA0712001122530
Complainant is Spinestudios, Inc. d/b/a SPINE3D (“Complainant”), represented by John
H. Friedhoff, of Fowler White Burnett P.A. of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spin3d.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David S. Safran, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 19, 2007.
On December 19, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <spin3d.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 January 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 28, 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 firstname.lastname@example.org by e-mail.
A hard copy of the Response was received and determined to be complete on January 28, 2008. However, an electronic copy of the Response was not received until February 1, 2008. Therefore, the Response is deemed deficient pursuant to Rule 5.
On February 7, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that Respondent’s <spin3d.com> is confusingly similar to Complainant’s SPINE 3D registered trademark and has resulted in actual confusion with customers intending to go to Complainant’s <spine3d.com> website landing at Respondent’s <spin3d.com> by mistake. Complainant also contends that without adequate supportive basis that the domain was registered and is being used in bad faith. Furthermore, Complainant asserts that Respondent has no rights or legitimate interests in the domain name <spin3d.com> solely on the basis of its trademark rights in the SPINE 3D trademark.
Preliminary Procedural Issue: Deficient Response
Respondent has provided a Response that was deficient because the National Arbitration Forum has determined that an electronic copy of the Response was not received until February 1, 2008, which was after the Response deadline. The Panel may decide whether or not to consider Respondent’s submission because it is not in compliance with ICANN Rule 5. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist); see also Bank of Am. Corp. v. NW Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (refusing to accept the Respondent’s deficient response that was only submitted in electronic form because it would not have affected the outcome had the Panel considered it). But see Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . . "); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Inasmuch as consideration of Respondent’s Response is unnecessary to finding in its favor since the Panel finds that Complainant has failed to establish at least a prima facie case of entitlement to the remedy sought (set forth in detail in the Discussion section below), the deficient Response has not been considered.
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.
Need not be addressed in view of the finding that Complaint has failed to prove factors (2) and (3).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
The only evidence of use of the <spin3d.com> domain name provided by Complainant shows that Respondent’s website provides instructions on how to convert “Old Age of Discovery” maps into globes, and the Panel finds this purely educational use of the disputed domain name is a legitimate noncommercial and fair use pursuant to Policy ¶ 4(c)(iii). See Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that the respondent has rights in the <missionsuccess.net> domain name where she was using the domain name in connection with a noncommercial purpose); see also Baja Marine Corp. v. Wheeler Techs., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001) (finding that the respondent has rights and legitimate interests in the domain name where the respondent made a non-commercial use of the <bajaboats.com> domain name and received no funds from users of the site connected to the domain name).
Furthermore, Complainant has asserted that Respondent has no rights or legitimate interests in the domain name <spin3d.com> solely on the basis of its trademark rights in the SPINE 3D trademark. However, unexplained by Complainant is how its trademark application that it filed on November 12, 2007 (and has not been approved for registration), at least five years after the <spin3d.com> domain name was registered, establishes that it has superior rights to Respondent. Likewise, unexplained is how a Florida State Trademark Registration for the SPINE 3D trademark or a New York State trademark registration for a different trademark, both of which were obtained in 2006 provided even notice to Respondent in Ohio, let alone affect Respondent’s earlier domain name registration. Therefore, the Panel finds that Respondent’s registration and use of the <spin3d.com> domain name predated Complainant’s alleged rights in the SPINE 3D mark, and thus evidences Respondent’s rights or legitimate interests in the <spin3d.com> domain name pursuant to Policy ¶ 4(a)(ii). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (“As the domain name was registered well before the trademarks and as it was clearly used for a legitimate purpose before the registration of the trademarks and a fortiori, before notification of the dispute, it is clear that Respondent has rights and legitimate interests in the domain name.”); see also Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before the complainant had established rights in its alleged mark).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
asserted that Respondent registered and used the
<spin3d.com> domain name in
bad faith under Policy ¶¶ 4(b)(iii) or (iv) but has failed to provide any
evidence establishing this fact. In this regard, the Panel finds it significant
that no evidence has been provided to indicate how Respondent would have had
knowledge of Complainant at the time that its domain name was registered given
the subsequent acquisition of trademark rights by Complainant and its remote
location from Respondent (
Complainant has asserted that Respondent has used the website at <spin3d.com> to divert Internet users from Complainant; however, no evidence of this fact has been provided. See Accu-Find Internet Servs. v. AccuFind, FA 94831 (Nat. Arb. Forum June 19, 2000) (denying the complainant’s request because the complainant’s allegations that the respondent registered the disputed domain name to divert Internet users from the complainant’s business were not sufficiently substantiated under Policy ¶ 4(a)(iii)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <spin3d.com> domain name be RETAINED by Respondent.
David S. Safran, Panelist
Dated: February 19, 2008
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