International Web Innovations, Inc v. Serdinc Yilmaz
Claim Number: FA0208000118397
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.
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.
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.
Complainant requests that the domain name be transferred from Respondent to 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.
Respondent filed no response.
Complainant has failed to establish a prima facie case.
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).
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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