William F. Supple, d/b/a Picket Fence Preview, Inc. v. OS Domain Holdings IV, LLC
Claim Number: FA0809001226473
Complainant is William F. Supple, d/b/a Picket
Fence Preview, Inc,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <picketfencespreview.com>, registered with Nameking.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Debrett Lyons and Diane Cabell as Panelists and David S. Safran as Panel Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 29, 2008.
On September 26, 2008, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <picketfencespreview.com> domain names is registered with Nameking.com, Inc. and that the Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 October 9, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 29, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 27, 2008.
On November 7, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett Lyons and Diane Cabell as Panelists and David S. Safran as Panel Chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that the domain <picketfencespreview.com> is deceptively similar to a trademark which it owns. Complainant also asserts that Respondent has no prior right or legitimate interest in the trademark Picket Fence Preview. It is also contended by the Complainant that the domain <picketfencespreview.com> is being used to mislead and confuse consumers and to disrupt Complainant’s business.
Respondent contends that Complainant’s trademark registration was cancelled by the United States Patent and Trademark Office for failing to submit required evidence of use prior to registration of the <picketfencespreview.com> domain name by Respondent and that Complainant has failed to establish a basis for common law trademark rights. Respondent also asserts that Complainant has failed to meet its burden of establishing bad faith registration and use of the <picketfencespreview.com> domain
Complainant has failed to establish that it holds trademark rights in the term “Picket Fence Preview” and has failed to provide evidence to support its contentions that Respondent has no rights or legitimate interests in respect of the domain name and the <picketfencespreview.com> domain name was registered and used in bad faith.
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 stated that it is “filing a suit in Vermont District court for punitive damages that have arisen from these acts by the respondent.” However, since Complainant has not filed or provided documentation of a lawsuit in Vermont District Court, Rule 18(a) it is not applicable to these proceedings. Thus, the Panel has proceeded with this administrative proceeding pursuant to Rule 18(a).
Respondent has provided evidence, verified by the Panel via the United States Patent and Trademark Office (“USPTO”) TARR system, that Complainant’s trademark registration Reg. No. 2,010,238 was cancelled by the USPTO on July 26, 2003, roughly nine months before the disputed domain name was registered. The Panel agrees that Complainant’s cancelled trademark registration does not confer any rights in the PICKET FENCE PREVIEW mark on Complainant and that, likewise, there is insufficient evidence that Complainant has accrued common law rights in the PICKET FENCE PREVIEW mark. As such, the Panel finds that Complainant has no rights in the PICKET FENCE PREVIEW mark under Policy ¶ 4(a)(i). 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 Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning).
Apart from asserting that Respondent has no rights or legitimate interests, Complainant has provided no evidence to support its contention. Therefore, the Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006).
Respondent states that Complainant has merely recited the words of the Policy under ¶ 4(b) without providing any additional evidence or reasoning and the Panel agrees. For example, unexplained by Complainant is how Respondent located in California would have been aware of the activities of Complainant that were limited to a small area of Vermont and New Hampshire, or why a trademark registration that had been cancelled for failure to establish continued use of the mark was not available for subsequent use by Respondent nine months later when its <picketfencespreview.com> domain name was registered. Therefore, the Panel finds that Complainant failed to meet its burden of proving of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <picketfencespreview.com> domain name shall be RETAINED by Respondent.
David S. Safran, Panel Chair
Debrett Lyons, Panelist
Diane Cabell, Panelist
Dated: November 20, 2008
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