national arbitration forum




Thomas D. Hathaway v. DJ Wimberly

Claim Number: FA0807001216935




Complainant is Thomas D. Hathaway (“Complainant”), Arizona, USA.  Respondent is DJ Wimberly (“Respondent”), Gerogia, USA.




The domain names at issue are <> and <>, registered with The NameIt Corporation d/b/a




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 July 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 24, 2008.


On July 31, 2008, The NameIt Corporation d/b/a confirmed by e-mail to the National Arbitration Forum that the <> and <> domain names are registered with The NameIt Corporation d/b/a and that Respondent is the current registrant of the names.  The NameIt Corporation d/b/a has verified that Respondent is bound by the The NameIt Corporation d/b/a 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 and by e-mail.


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


On September 8, 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 names be transferred from Respondent to Complainant.




A.  Complainant makes the following assertions:


1.      Respondent’s <> and <> domain names are identical and/or confusingly similar to Complainant’s XGSTOUR mark.


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


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


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




Complainant, Thomas D. Hathaway, owns the Xgstour business, which operates under the XGSTOUR mark (Ser. No. 77/520,525 filed July 11, 2008).  Complainant has owned and operated the <> domain name since April 14, 2008.


Respondent registered the <> and <> domain names on October 23, 2007.  There is no active use being made of either disputed domain name.




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 asserts its rights in the XGSTOUR mark via the application for trademark status with the USPTO.  However, an application for trademark status does not carry the same weight that a pre-existing registered trademark holds in meeting the requirements under Policy ¶ 4(a)(i).  See Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s pending trademark applications did not establish rights because “an application for [a] mark is not per se sufficient to establish rights [in] a trademark for the purposes of the [Policy]”). 


Nonetheless, a complainant need not demonstrate a trademark’s registration with a governmental trademark authority in order to satisfy the threshold requirements of Policy ¶ 4(a)(i), so long as Complainant can show sufficient common law rights in the mark that predate the disputed domain names’ registrations.  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v., 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’s trademark application lists the date of first use as September 25, 2007.  However, Complainant must support this evidentiary assertion with documentation and further evidence of common law rights.  Complainant’s submitted evidence, however, fails to meet this standard.  First, Complainant’s letter from an accounting professional, itself postdating the domain name registrations, indicates that a business named XGSTOUR was in the planning stages in September 2007.  Complainant submits a predating non-disclosure agreement, referenced in the above letter as support; however, there is no reference to this business.


Of course, even if the business was referenced, the record contains no information that would support the necessary secondary meaning and distinctiveness to establish common law trademark rights.  See 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); see also 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).


Although the Respondent failed to respond to the Complaint, that failure alone is insufficient to warrant a ruling in Complainant’s favor.  See Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”); but see VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).


As such, because Complainant has failed to submit evidence demonstrating its common law rights in the XGSTOUR mark that predate the disputed domain name registrations, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i).  The Panel exercises its discretion to forego an analysis of the remaining Policy ¶¶ 4(a)(ii) and (iii) elements.  See, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that, although the respondent’s domain name <> was identical to the complainant’s incorporated business name, the complainant did not claim to hold any trademark or service mark rights in CYBERIMPRINTS or CYBERIMPRINTS.COM, and therefore, its request for transfer was denied); see also 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).


Rights or Legitimate Interests


Because of the aforementioned reasons, the Panel need not address this section of the Policy.


Registration and Use in Bad Faith


Because of the aforementioned reasons, the Panel need not address this section 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 <> and <> domain names REMAIN with Respondent.




Bruce E. Meyerson, Panelist

Dated:  September 18, 2008



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