national arbitration forum




Leah Kando v. Elms Web Services, Inc

Claim Number: FA0805001192082



Complainant is Leah Kando (“Complainant”), represented by Louis Paz Winner, of Seiller Waterman, LLC, Kentucky, USA.  Respondent is Elms Web Services, Inc (“Respondent”), California, USA.



The domain name at issue is <>, registered with, 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.


Louis E. Condon as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 23, 2008.


On May 21, 2008,, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with, Inc. and that Respondent is the current registrant of the name., Inc. has verified that Respondent is bound by the, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").


On May 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 18, 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 by e-mail.


Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.


On June 21, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.


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 <> domain name is identical to Complainant’s LEAH KANDO mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


B.  Respondent failed to submit a Response in this proceeding.



Complainant, Leah Kando, alleges that she uses the LEAH KANDO mark, Complainant’s name, in the modeling, entertainment, and VIP companion industry.


Respondent, Elms Web Services, Inc, registered the <> domain name on March 31, 2008, which resolves to a Complaint website about Complainant.  



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.


Identical and/or Confusingly Similar


Complainant has not presented evidence of trademark registration with any governmental authority for her LEAH KANDO mark.  However, trademark registration is not dispositive provided Complainant can establish common law rights in its mark.  In SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000), the panel found 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.  The Panel in Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000), found common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established. 


However in this case, Complainant has not met this burden.  Complainant has alleged use of the LEAH KANDO mark but failed to provide evidence to establish how long Complainant has utilized the mark in the modeling industry or present the Panel with any documentation of her use, which could establish the secondary meaning requisite in acquiring common law trademark rights.  Therefore, due to the failure to produce evidence establishing secondary meaning, the Panel finds that Complainant has not met its burden of proof for establishing common law rights in the mark pursuant to Policy ¶ 4(a)(i).  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 has not satisfied Policy ¶ 4(a)(i), therefore, the Panel chooses to dismiss the Complaint without prejudice.  In Cluett, Peabody & Co., Inc. v. Sanford Bus. Writing Serv., FA 95842 (Nat. Arb. Forum Dec. 12, 2000), the panel allowed a complaint to be refiled because the previous Panelist had “expressly reserved the right of Complainant to recharge bad faith registration and use of the domain name in issue.”  Similarly, the current Panel expressly reserves the right of Complainant to refile the Complaint when she can provide documentation or other evidence establishing her common law rights in the LEAH KANDO mark.  See also Jones Apparel Group Inc. v. Jones Apparel, D2001-1041 (WIPO Oct. 16, 2001) (allowing refiling because the previous panelist gave the “green light in the clearest possible way to refiling the Complaint to correct [the previous Complaint’s omissions]”); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (describing the type of evidence that could support a finding of common law rights in a mark (e.g., business sales figures, revenues, advertising expenditures, or number of consumers served)).


The Panel finds that Policy ¶ 4(a)(i) has not been satisfied. 


Rights or Legitimate Interests & Registration and Use in Bad Faith



As the Panel finds Policy ¶ 4(a)(i) has not been satisfied, it is unnecessary to examine Policy ¶¶ 4(a)(ii) and (iii).  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 Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).




Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that complaint should be DISMISSED WITHOUT PREJUDICE.




Louis E. Condon, Panelist

Dated:  July 2, 2008



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