International Web Innovations, Inc v.
Serdinc Yilmaz
Claim Number: FA0208000118397
PARTIES
Complainant
is International Web Innovations, Scottsdale, AZ (“Complainant”)
represented by Alyssa Smythe.
Respondent is Serdinc Yilmaz, El Cerrito, CA (“Respondent”) .
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <teensteam.us>, registered with directNIC.com.
PANEL
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.
John
J. Upchurch as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 16, 2002; the Forum received a hard copy of the
Complaint on August 15, 2002.
On
August 19, 2002, directNIC.com confirmed by e-mail to the Forum that the domain
name <teensteam.us> is registered with directNIC.com and that
Respondent is the current registrant of the name. directNIC.com has verified that Respondent is bound by the directNIC.com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On
September 9, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 30, 2002 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of
the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 22, 2002, pursuant to Complainant’s request to have the dispute decided
by a three-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles
of law that the Panel deems applicable, without the benefit of any Response
from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
The domain
name <teensteam.us> is identical or confusingly similar to a mark
in which Complainant has rights.
2.
Respondent
has no legitimate rights or interests in the domain name.
3.
The domain
name was registered or used in bad faith.
B.
Respondent
Respondent
filed no response.
FINDINGS
Complainant has failed to establish a prima
facie case.
DISCUSSION
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 the 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.
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; and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant
claims to hold rights in the TEENSTEAM.COM mark. As proof of its rights Complainant submits a trademark
application receipt. It is not overtly
clear where the receipt came from and Complainant didn’t specify which
authority it filed the trademark application with. However, independent research confirms that the address on the application
receipt is a valid address of the U.S. Patent and Trademark Office. A party need not have a registered trademark
to bring a claim, but in some instances a pending trademark application will be
deemed sufficient. Therefore,
Complainant’s pending trademark application is deemed enough to establish
standing. See Great Plains
Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding
that the Uniform Domain Name Dispute Resolution Policy does not require “that a
trademark be registered by a governmental authority for such rights to exist”);
see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO
Apr. 13, 2000) (finding that the Rules do not require that Complainant's
trademark or service mark be registered by a government authority or agency for
such rights to exist. Rights in the mark
can be established by pending trademark applications).
Complainant argues
that Respondent’s <teensteam.us> domain name is “strikingly and
confusingly similar” to its TEENSTEAM.COM mark. The Panel accepts Complainant’s contentions because the
transposition of the top-level domain part of the mark does not affect the
determination. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top- level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar).
Complainant
failed to present argument or evidence as to these issues. All the Complaint does is merely restate the
Policy with no fact specific arguments or evidence to demonstrate why
Respondent has no legitimate rights or interests in the <teensteam.us>
domain name.
Furthermore, Complainant cites to the
usTLD Policy but subsequently recites the UDRP Policy for lack of rights or
legitimate interests on the part of Respondent. This is important because the two Policies diverge on this
issue. The usTLD Policy commands more
than the UDRP Policy. Specifically, the usTLD Policy requires that Complainant
demonstrate that Respondent is not “the owner or beneficiary of a trade or
service mark that is identical to the domain name.” Complainant failed to include that argument in the Complaint and
therefore failed to establish a prima facie case against
Respondent. Therefore, the Panel finds
that Complainant has failed to satisfy its burden of production under Policy ¶
4(a)(ii). See Do the Hustle v.
Tropic Web, D2000-0624 (WIPO August 21, 2000) (finding that paragraph 4(a)
of the Policy sets out three elements implying that Complainant has the burden
of proof as to each of the three elements).
Registration and Use in Bad Faith
The Panel need not undertake a bad faith
analysis due to Complainant’s failure to sufficiently state a claim under
Policy ¶ 4(a)(ii), and Complainant’s failure to apply the appropriate body of
law under that same issue. See Creative
Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because Complainant must prove all three elements under the
Policy, Complainant’s failure to prove one of the elements makes further
inquiry into the remaining element unnecessary).
DECISION
Complainant has failed to establish a prima
facie case. The Panel finds in
favor of Respondent and DENIES
Complainant’s request for relief.
John J. Upchurch, Panelist
Dated:
November 14, 2002
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