Brewer Quilting and Sewing Supplies, Inc. v. Mustafa Mumin
Claim Number: FA0803001155830
Complainant is Brewer Quilting and Sewing Supplies,
Inc. (“Complainant”), represented by Brian D. Fergemann, of Winston & Strawn LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brewerquilting.com>, <brewersquilting.com>, <brewerquiltingandsewing.com>, <brewersquiltingandsewing.com>, <brewerquiltingandsewingsupplies.com> and <brewersquiltingandsewingsupplies.com>, registered with Godaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On March 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 31, 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, 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
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. Respondent’s <brewerquilting.com>, <brewersquilting.com>, <brewerquiltingandsewing.com>, <brewersquiltingandsewing.com>, <brewerquiltingandsewingsupplies.com> and <brewersquiltingandsewingsupplies.com> domains, the domain names at issue, are confusingly similar to Complainant’s BREWER, BREWER SEWING SUPPLIES and BREWER QUILTING AND SEWING SUPPLIES, the “Brewer Trademarks.”
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and has used the domain names at issue in bad faith
1. Respondent denies that Complainant has any interest in the “Brewer Trademarks” or in the domain names at issue.
2. Respondent claims that it has rights and legitimate interests in the domain names at issue because of planned use to impress Complainant of Respondent’s website building capability.
3. Further, Respondent denies registration or use of the domain names at issue in bad faith.
Complainant acquired substantially all of the assets of Brewer Sewing Supplies Company and Quilters’ Resources, Inc. in December of 2007. Although Complainant alleges that its predecessor in interest used BREWER, BREWER SEWING SUPPLIES and BREWER QUILTING AND SEWING SUPPLIES, the “Brewer Trademarks,” as early as 1914, there is no evidence of any kind proffered by Complainant to this effect or to the effect that that the “Brewer Trademarks” had acquired any secondary meaning sufficient to uniquely identify the goods of Complainant’s predecessor. There is no allegation that the “Brewer Trademarks” have become common law trademarks. Further, there is no evidence offered to prove that Complainant purchased any gross or specific rights in the intellectual property of its predecessor in interest. There is no allegation that any of the “Brewer Trademarks” have been registered with any governmental entity. Similarly, Complainant offers no proof that Respondent had no rights or legitimate interests in the domain names at issue or that he registered them in bad faith.
Respondent was apparently an employee of Complainant’s predecessor in interest and claims that Complainant had no rights in and to the domain names at issue when registered a few days after sale of Complainant’s predecessor in interest to Complainant in December of 2007. Respondent alleges he registered the domain names at issue to impress the new owner of his company with his expertise at building websites. Shortly following the acquisition, Complainant’s president contacted Respondent (presumably while still an employee of the acquired company) and sought to purchase the domain names at issue from Respondent and a dispute ensued as to their value, ultimately resulting in this proceeding.
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.
Complainant has not established rights in any of its alleged marks under Policy ¶ 4(a)(i). Complainant provides no evidence of trademark registrations of any of the “Brewer Trademarks” nor even minimal evidence of common law rights. Complainant has failed to meet this initial burden, and the Panel elects to deny the requested relief. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving 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).
Complainant does not have rights in any of its alleged marks according to Policy ¶ 4(a)(i), and the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii)).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has not been satisfied and that it is unnecessary to rule on the remaining two elements of the Policy.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief requested by Complainant shall be DENIED.
James A. Carmody, Esq., Panelist
Dated: April 16, 2008
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