Brewer Quilting and Sewing
Supplies, Inc. v. Mustafa Mumin
Claim Number: FA0803001155830
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
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 postmaster@brewerquilting.com, postmaster@brewersquilting.com, postmaster@brewerquiltingandsewing.com,
postmaster@brewersquiltingandsewing.com, postmaster@brewerquiltingandsewingsupplies.com
and postmaster@brewersquiltingandsewingsupplies.com by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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
B. Respondent
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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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