MDM Products LLC v. Shelter King
Claim Number: FA0805001183258
Complainant is MDM Products LLC (“Complainant”), represented by Gene
S. Winters, of St. Onge Steward Johnston & Reens LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shelterking.com>, registered with Network Solutions, 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 electronically on
7, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 27, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shelterking.com> domain name is identical to Complainant’s SHELTER KING mark.
2. Respondent does not have any rights or legitimate interests in the <shelterking.com> domain name.
3. Respondent registered and used the <shelterking.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is in the business of producing and selling protective canopies and tents for the storage of vehicles, industrial equipment and machinery and for recreational use. Complainant began marketing its products under the SHELTER KING mark in 2002.
Respondent registered the disputed domain name on
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Registration of a mark with a governmental trademark
authority is not necessary to establish rights under Policy ¶ 4(a)(i) provided
that Complainant can demonstrate common law rights in the mark. See
SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that the complainant's trademark or
service mark be registered by a government authority or agency for such rights
to exist); see also
Complainant has alleged common law rights in the SHELTER KING mark dating back to 2002. Complainant, however, has failed to provide sufficient evidence supporting its rights in the mark. Therefore, the Panel finds that Complainant has not established secondary meaning in the mark sufficient to confer common law rights 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); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence, statements or proof (e.g., business sales figures, revenues, advertising expenditures, number of consumers served, trademark applications or intent-to-use applications).
Moreover, even if the common law rights dating back to 2002
had been established, the disputed domain name was registered in November
2001. Thus, Complainant’s rights in the
mark do not predate Respondent’s registration.
The Panel concludes that Complainant has failed to satisfy Policy ¶
4(a)(i) because Complainant’s rights do not predate Respondent’s domain name
registration. See Intermark Media, Inc. v.
Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding
that any enforceable interest that the complainant may have in its common law
mark did not predate the respondent’s domain name registration, therefore
finding that Policy ¶ 4(a)(i) had not been satisfied); see also
The Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i).
As Complainant has failed to satisfy Policy ¶ 4(a)(i), the Panel chooses not to discuss Policy ¶ 4(a)(ii).
Although Complainant contends that Respondent was a former
employee, and therefore registered the disputed domain name with knowledge of
Complainant’s business, the Panel concludes that Complainant has failed to
provide sufficient evidence supporting its allegations of registration and use
in bad faith under Policy ¶ 4(a)(iii). Furthermore,
Complainant has not provided any evidence of Respondent’s current use of the
disputed domain name. Thus, the Panel
concludes that Respondent did not register the disputed domain name in bad
faith pursuant to 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 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
In addition, Respondent’s registration of the disputed domain name <shelterking.com> domain name predates Complainant’s alleged common law rights in the SHELTER KING mark. Therefore, the Panel concludes that there is insufficient evidence of Respondent’s registration and use in bad faith under Policy ¶ 4(a)(iii). See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of the unanimous view that the trademark must predate the domain name.”); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).
The Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(iii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.
James A. Carmody, Esq., Panelist
Dated: June 9, 2008
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