Antoine Durand de Corbiac v.
Dave Lizmi
Claim Number: FA0803001164094
PARTIES
Complainant is Antoine Durand de Corbiac (“Complainant”),
France. Respondent is Dave Lizmi
(“Respondent”), represented by John Berryhill,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cyranodebergerac.com>, registered
with Moniker
Online Services, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and to the best of her knowledge has no known conflict in serving
as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically March 18, 2008; the
National Arbitration Forum received a hard copy of the Complaint March 19, 2008.
On March 18, 2008, Moniker Online Services, Inc. confirmed by
e-mail to the National Arbitration Forum that the <cyranodebergerac.com>
domain name is registered with Moniker Online Services,
Inc. and that Respondent is the current registrant of the name. Moniker Online
Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On March 26, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 15, 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@cyranodebergerac.com by e-mail.
Respondent did not submit a Response; however, Respondent did submit a
timely Additional Submission, which was received on April 16, 2008, and
determined to be complete pursuant to Supplemental Rule 7.
On April 24, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
makes the following allegations in this proceeding:
1.
Respondent
registered a domain name that was confusingly similar or identical to a mark in
which Complainant has protected rights.
2.
Respondent
has no rights to or legitimate interests in the domain name containing
Complainant’s protected mark.
3.
Respondent
registered and used the domain name in bad faith.
B. Respondent did not file a Response.
C. Additional Submissions:
Respondent did file a timely Additional Submission. According to Supplemental Rule 7(a), if no
Response has been filed, a party has five calendar days after the last date the
Response was due to be received by the Forum to submit an additional
submission. In this case, the Response
was due to be received by the Forum April 15, 2008; the Forum received
Respondent’s Additional Submission April 16, 2008. Therefore,
Respondent's Additional Submission was timely and complete, and was considered
in rendering this decision. Accordingly, Respondent's arguments in its
Additional Submission are addressed below in the analysis of the Policy.
Respondent set out the following allegations in the Additional
Submission:
1. That Complainant did not establish rights in
the alleged mark because the documents submitted show pending applications.
2. That Respondent registered the domain name in
2000 and Complainant’s earliest alleged registration is in the year 2006.
3. That Respondent has rights in the domain
names and uses and has used the site for many years in bona fide and legitimate manner.
4. That Respondent has not acted in bad faith
and Complainant’s allegations of bad faith are not supported because the domain
name was registered six years before Complainant suggests registration of the mark.
5. That Complainant is engaged in reverse domain
name hi-jacking.
FINDINGS
1.
Complainant
has failed to show rights in a registered mark by legal proof or otherwise.
2.
Respondent’s
rights in the domain name preceded any establishment by Complainant of rights
in the mark.
3.
The
Arbitrator declines to find Reverse Domain Hi-jacking based on the submissions
here.
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 Complainant to 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 Respondent is
identical to or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) Respondent registered and is using the domain
name in bad faith.
Preliminary Substantive Issue: Complainant’s
Alleged Trademark Registrations
Complainant alleges it has registered trademarks for the CYRANO DE
BERGERAC mark with the United States Patent and Trademark Office
("USPTO"), the Office of the Harmonization of the Internal Market
("OHIM"), and Institute National de la Propriete Industrielle
("INPI," which is the French trademark office). However, the
corresponding evidence and exhibits submitted by Complainant clearly document
that the USPTO and OHIM trademark applications have been filed, but no showing
was made that registrations have been issued. Complainant submitted the INPI
document in French. The Arbitrator
believes that the document permits an inference that the application is
pending. Pursuant to Supplemental Rule 12, the Panel may request further
information from Complainant to confirm the status of its trademark application
or registration with the INPI; however, in this case, no necessity exists for
further proof that Complainant should have provided with the Complaint. The Arbitrator rules on the material as
submitted.
Complainant urges that it has legal rights to the CYRANO
DE BERGERAC mark and urges that it first registered its CYRANO DE BERGERAC mark
with the Institute National de la Propriete Industrielle (INPI) of
Respondent’s <cyranodebergerac.com> domain name fully incorporates what Complainant urges is its protected mark; however, Complainant failed to show rights in the CYRANO DE BERGERAC mark. Respondent correctly contends that Complainant provided evidence of trademark applications to the USPTO and the OHIM, along with the alleged the INPI trademark registration. In these circumstances, where there has been shown no actual trademark registration, applications do not confer rights in a mark pursuant to Policy ¶ 4(a)(i). See Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s pending trademark applications did not establish rights because “an application for [a] mark is not per se sufficient to establish rights [in] a trademark for the purposes of the [Policy]”); see also Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (“Complainant’s pending applications do not establish any enforceable rights until registration issues.”).
Additionally, the Panel looked to the issue of common law rights based on the filing with the USPTO; however, Complainant provided insufficient evidence to support a finding of common law rights beyond the information contained in the trademark applications. Trademark applications alone are insufficient to confer common law rights in the mark pursuant to Policy ¶ 4(a)(i). See 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).
The Panel finds that Complainant did not satisfy ICANN Policy ¶ 4(a)(i) because Complainant failed to show in this submission
that it established rights in the mark.
Complainant did not satisfy ICANN Policy ¶ 4(a)(i).
Because Complainant failed to satisfy ICANN Policy ¶ 4(a)(i), the Panel does not do the analysis under section ICANN
Policy ¶ 4(a)(ii).
.
Because Complainant failed to satisfy ICANN Policy ¶ 4(a)(i), the Panel does not do the analysis under section ICANN
Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Respondent alleges Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent alleges Complainant knew Respondent registered its disputed domain name prior to Complainant’s registration of its CYRANO DE BERGERAC mark. Although some evidence exists that Complainant misrepresented the allegations about proof supporting an alleged offer by Respondent to sell the domain name, the Panel declines to find that Reverse Domain Name Hi-jacking occurred in this filing.
DECISION
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 <cyranodebergerac.com> domain name NOT be TRANSFERRED but remain with Respondent.
Hon. Carolyn Marks
Johnson, Panelist
Dated: May 8,
2008.
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