San Benito Shutter, Inc. v.
Texas International Property Associates - NA NA
Claim Number: FA0807001215424
PARTIES
Complainant is San Benito Shutter, Inc. (“Complainant”), represented by Michael J. Hughes, of IPLO Intellectual Property Law Office, California, USA. Respondent is Texas International Property Associates - NA NA (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sanbenitoshutters.com>, registered
with Compana,
LLC.
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.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 15, 2008; the
National Arbitration Forum received a hard copy of the Complaint on July 17, 2008.
On July 16, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <sanbenitoshutters.com> domain name
is registered with Compana, LLC and that
the Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
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 July 28, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 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 postmaster@sanbenitoshutters.com by e-mail.
A timely Response was received and determined to be complete on August 18, 2008.
On August 26, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Sandra J. Franklin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
Respondent’s <sanbenitoshutters.com> domain name
is confusingly similar to Complainant’s
Respondent uses the <sanbenitoshutters.com> domain as a host site linking various other sites, including some belonging to competitors of Complainant.
Respondent registered and used the <sanbenitoshutters.com> domain name in bad faith.
B. Respondent makes the following assertions:
Complainant had to disclaim the entire phrase “San Benito Shutter” in
its trademark registration, due to descriptiveness.
Respondent has rights and a legitimate interest in the <sanbenitoshutters.com> domain name.
Respondent registered and is using the <sanbenitoshutters.com> domain name
in good faith, following a legitimate business model.
FINDINGS
Complainant holds a U.S. Trademark
Registration for
DISCUSSION
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.
In its Complaint, Complainant states that it
has a U.S. Trademark Registration for the mark
Respondent’s argument that the terms of the disputed domain name are generic and geographically descriptive are borne out by a reading of the disclaimer requirement in the trademark file for Complainant’s registration, provided by Respondent.
This Panel finds that
Complainant has not met its burden of showing rights in the words “SAN BENITO
SHUTTER,” and therefore has no legitimate claim to the <sanbenitoshutters.com> domain name. See
Game X Change, Inc. v. Modern Empire
Internet Ltd., FA 1155839 (Nat. Arb. Forum May 6, 2008) (“the words ‘Game Exchange’ have
been disclaimed together and ‘Game Exchange’ is essentially the entire
substance of the disputed domain name.
Once the disclaimed expression has been discounted, there is
nothing left in the trademark with which there can be said to be confusing
similarity”); see also Minibar N. Am. Inc. v. Musk, D2005-0035 (WIPO Mar. 2, 2005) (“The words ‘Minibar Systems’ have been disclaimed together
and ‘Minibar Systems’ is essentially the entire substance of the Domain
Name.”).
To prevail, Complainant must establish all
three required elements under the Policy.
Having failed to establish the very first element, the Complaint fails.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Sandra J. Franklin, Panelist
Dated: September 9, 2008
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