Gregg Mercede v. Wachter Consulting Inc
Claim Number: FA0805001194793
Complainant is Gregg Mercede (“Complainant”), represented by Gregg Mercede, Connecticut, USA. Respondent is Wachter Consulting Inc. (“Respondent”), Panama City, Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mercede.com>, registered with Dynadot, LLC.
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.
Honourable Neil Anthony Brown QC as Panelist, David A. Einhorn as Panelist, and Sandra J. Franklin as Panelist and Chairperson.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 30, 2008.
On May 30, 2008, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <mercede.com> domain name is registered with Dynadot, LLC and that the Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 June 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 30, 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 email@example.com by e-mail.
A timely Response was received by e-mail on July 1, 2008. The Response was deemed deficient pursuant to ICANN Rule 5 because a hard copy of the Response was not received until after the Response deadline.
On July 11, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honourable Neil Anthony Brown QC as Panelist, David A. Einhorn as Panelist, and Sandra J. Franklin as Panelist and Chairperson.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant states the following:
1. The <mercede.com> domain name matches his last name, and is part of his service offering.
2. The Respondent is parking the <mercede.com> domain name for 411.com.
B. Respondent’s response was technically deficient, since the hard copy was received late by the Forum. The Panel finds that it is unnecessary to consider the deficient response, for the reasons set forth below.
The Panel finds that the Complainant has failed to prove that he has rights in a trademark which is confusingly similar to the disputed domain name.
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 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;
(2) the 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.
Complainant makes a bald statement that the domain name matches his last name, and that it is part of his service offering, though he does not state what service offering. Complainant does not provide evidence of any registered trademark, and actually fails to even allege any rights to any mark. Therefore, the Panel finds that Complainant has failed to establish rights in any mark for the purposes of Policy ¶ 4(a)(i). See Falwell v. Cohn, D2002-0184 (WIPO June 3, 2002) (“Complainant claims a common law trademark in his personal name. The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services.”); see also Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness).
The Panel declines to analyze the other two elements of the Policy, as well as the late response that was submitted, as the Complaint cannot succeed. 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)).
Having failed to establish the very first required element under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Sandra J. Franklin, Panelist and Chairperson
David A. Einhorn, Panelist
Dated: July 25, 2008
I would reach the same conclusion and decision as the majority of the Panel, but by a slightly different route. The first question that arises is whether the Panel should accept the late Response filed by the Respondent and take it in account. The majority is of the opinion that the Panel should not do so. I am of the opinion that the Panel should accept the late Response and take it into account. It is clear that the Rules should be complied with, but it is also clear that the Panel has a discretion which must be exercised having regard to all relevant matters and should give reasons why it accepts or rejects a late Response.
Having considered all of those matters I would accept the Response for the following reasons:
First, the Response was late by only a very short period of time. Moreover, the record shows that, well within the time for the Response, the Respondent had put a submission to the Forum as to why the Complaint should be dismissed. In other words, the Respondent has not ignored the process or been contemptuous or indifferent to it but had in fact been taking part in it before the time for delivery of the hard copies of the Response expired.
Second, the hard copies of the Response were
due on June 30, 2008. On June 27, 2008 the Respondent sent an email to the
Forum to the effect that he was travelling in
Third, the delay has not caused any prejudice and in particular the Complainant has not claimed that he has suffered any prejudice.
Fourth, the Complaint was inadequate in itself and in reality it is only by reading the Response that the reader is able to get a complete understanding of the issues involved in this case.
I would therefore accept the Response and add to the Decision the following, to show that the Response has been taken into account.
Respondent states the following:
1. The Complainant has not shown by evidence or argument that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
2. The Respondent has a right or legitimate interest in the domain name as it acquired the domain name legitimately and is in the business of using domain names for the purpose of earning income.
3. The Complainant has not shown by evidence or argument that the Respondent registered and is using the domain name in bad faith.
I agree with the conclusion of the majority that the Complainant has not provided evidence of a registered trademark and has not alleged any rights to any mark and that the Complaint must fail for that reason. To show that the Response has been taken into account, I would include a statement in the decision to the effect that the above proposition was the submission of the Respondent and that the Panel accepts the Respondent’s submission and the reasons it advanced for it.
As the Complainant has failed to make out the first of the three elements he must establish, is not necessary for the Panel to consider the second and third elements.
REVERSE DOMAIN NAME HIJACKING
The Respondent submits that the Panel should find that the present case is an attempt at Reverse Domain Name Hijacking as the domain name has been registered in the name of the Respondent for the last six years, the Complainant took no steps to obtain registration of the name during that time and for the same time the Complainant seems to have been content to have his name reflected in a different domain name, namely <mercede.net>. The Complainant has not sought to rebut or reply to any of these arguments. The arguments advanced by the Respondent are quite strong and it has been useful to have them advanced. Moreover, the Complainant’s case is weak and he has done nothing to show the reason for the long delay in bringing the Complaint. But on balance I would not find Reverse Domain Name Hijacking as, whatever the weaknesses in the Complainant’s present case may be, he clearly once held the registration of the domain name and it is understandable why he would now try to retrieve it.
I agree with the Decision of the majority that, having failed to establish the very first required element under the ICANN Policy, the relief claimed should be DENIED.
Honourable Neil Anthony Brown QC
July 25, 2008
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