Gable & Gotwals, Inc. d/b/a GableGotwals v. Dave Jackson
Claim Number: FA0806001212305
Complainant is Gable & Gotwals, Inc. d/b/a
GableGotwals (“Complainant”),
represented by Mia Vahlberg, of GableGotwals,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gablegotwals.com>, registered with Schlund+Partner Ag.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 30, 2008.
On August 1, 2008, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <gablegotwals.com> domain name is registered with Schlund+Partner Ag and that Respondent is the current registrant of the name. Schlund+Partner Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 August
8, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 28, 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 postmaster@gablegotwals.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <gablegotwals.com> domain name is identical to Complainant’s GABLEGOTWALS mark.
2. Respondent does not have any rights or legitimate interests in the <gablegotwals.com> domain name.
3. Respondent registered and used the <gablegotwals.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a law firm that claims to have used the GABLEGOTWALS mark in commerce since January 1, 2006. The GABLEGOTWALS mark is the name of Complainant’s firm, which is reflected on Complainant’s letterhead and other marketing materials.
Respondent registered the <gablegotwals.com> domain name on August 26, 2006. The disputed domain name resolves to a website displaying information regarding an “Inmate Search.”
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.
To satisfy Policy ¶ 4(a)(i),
Complainant must first establish rights to a mark. This can be accomplished either through a
trademark registration with a governmental authority, or by proving that the
mark has acquired common law rights through a showing of secondary
meaning. See Hiatt v. Pers. Fan &
Official Site Builders : we build great sites, FA
881460 (Nat. Arb. Forum Feb. 21, 2007) (“Registration with a trademark
authority is unnecessary under Policy ¶ 4(a)(i) in instances
where a mark has gained secondary meaning through extensive commercial use and
common law rights have been established ….”); see also Artistic Pursuit LLC
v. calcuttawebdevelopers.com,
FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that
Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can
establish common law rights in its mark).
Complainant does
not hold a registered trademark for the GABLEGOTWALS mark, but alleges to
possess common law rights in the mark based upon its continuous use in commerce
since January 1, 2006. Complainant
alleges that GABLEGOTWALS is its law firm name, which is reflected on the
firm’s letterhead and marketing materials.
However, Complainant failed to provide any evidence in the record
supporting these assertions. Complainant
did not provide any exhibits demonstrating such use, so the Panel does not have
any other information to rely upon.
In EU Property Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007), the panel noted that “[a]lthough it has been held that there is no requisite showing to establish common law rights, common sense dictates that something beyond mere proof of business establishment is necessary.” In this case, Complainant has produced nothing more than its establishment of a law firm operating under the name GABLEGOTWALS. While Complainant’s assertions regarding its use of the name and mark in commerce may be true, the Panel cannot rely on these statements alone as proof of common law rights. The panel in Weatherford International, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) stated:
Although Complainant’s assertion that it holds common law rights in the WELLSERV mark dating back to 1988 is uncontested by Respondent, Complainant fails to demonstrate with sufficient evidence its rights to the Panel. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent’s default does not automatically lead to a ruling for Complainant). Complainant neglected to include any evidence indicating that its affiliate, WellServ Ltd., makes sufficient use of the WELLSERV mark justifying transfer of the disputed domain name. 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 … Although Complainant’s WELLSERV product and related services may be well-known among relevant consumers, that is a finding that must be supported by evidence and not self-serving assertions.
The Panel finds similar circumstances in this case. Other than Complainant’s assertions, there is no other evidence indicating that the GABLEGOTWALS mark has acquired secondary meaning or source identity in commerce, and use alone is not sufficient to prove this assertion. On this basis, the Panel concludes that Complainant has failed to establish any trademark or common law rights in the GABLEGOTWALS mark, and has therefore failed to satisfy this element of the Policy. See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); see also Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)).
The Panel therefore finds that Policy ¶ 4(a)(i) has not been satisfied.
Consequently, the Panel declines
to analyze the other two elements of the Policy. 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)).
For the reason stated above, the Panel declines to analyze this element of the Policy.
For the reason stated above, the Panel declines to analyze this element of the Policy.
Having failed to establish all three elements required under
the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.
Accordingly, it is Ordered that the <gablegotwals.com> domain name remain with Respondent.
Bruce E. Meyerson, Panelist
Dated: September 18, 2008
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