William F. Supple, d/b/a
Picket Fence Preview, Inc. v. OS Domain Holdings IV, LLC
Claim Number: FA0809001226473
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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
postmaster@picketfencespreview.com 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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
FINDINGS
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.
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.
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).
DECISION
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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