Accreditation Now Inc. v. accreditation now
Claim Number: FA0810001231456
Complainant is Accreditation Now Inc. (“Complainant”), represented by Kimberly
A. Force, of Force Law Office,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <accreditationnow.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2008.
On October 29, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <accreditationnow.net> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 November 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 1, 2000 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 8, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <accreditationnow.net> domain name is identical to Complainant’s ACCREDIDATION NOW mark.
2. Respondent does not have any rights or legitimate interests in the <accreditationnow.net> domain name.
3. Respondent registered and used the <accreditationnow.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Accredidation Now Inc., has used the ACCREDIDATION NOW mark in commerce for approximately six years. Complainant has a pending trademark application with the United States Patent and Trademark Office (“USPTO”) (Serial No. 77/568,450 filed September 12, 2008) for the ACCREDIDATION NOW mark, and also owns and operates the <accredidationnow.com> domain name.
Respondent registered the disputed <accreditationnow.net> domain name on November 6, 2007.
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 achieve standing under the UDRP, Complainant must present evidence of rights in a mark. Complainant can accomplish this pursuant to Policy ¶ 4(a)(i) by evidencing a USPTO trademark registration, or by demonstrating that the mark has acquired secondary meaning sufficient to confer common law rights. 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).
evidences its USPTO trademark application that is still pending. However, this application alone does not
establish rights in the ACCREDIDATION NOW mark pursuant to 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]”); see also
Therefore, Complainant must prove that the ACCREDIDATION NOW mark has acquired secondary meaning through use in commerce. Complainant states that it has used the mark in commerce since 2002, but does not provide any evidence of its use. The Panel is also unsure of what Complainant’s business is, and how the ACCREDIDATION NOW mark corresponds to that business. Complainant does state that it uses the <accredidationnow.com> domain name, but does not provide evidence of how it is used. Therefore, the Panel finds that the record is devoid of evidence that demonstrates that the ACCREDIDATION NOW mark has acquired secondary meaning. Accordingly, the Panel finds that Complainant has failed to establish sufficient rights in the ACCREDIDATION NOW mark pursuant to Policy ¶ 4(a)(i). See Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); 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).
The Panel therefore finds that Complainant has failed to satisfy the requirements of Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
According to Complainant, Respondent is using the disputed
domain name to “offer services that are confusingly similar to those services
offered by Complainant.” Complainant
later states, “[i]t is unclear whether or not Respondent is actually operating
the business described on its website.”
Complainant does not provide a screen printout of the disputed domain
name’s resolving website. In addition,
the WHOIS information identifies Respondent as “accredidation now,” and
Complainant has not provided any rebuttal evidence to demonstrate that
Respondent is not commonly known by the disputed domain name. In fact, Complainant makes no arguments with
respect to the Policy ¶ 4(c) elements.
Therefore, the Panel concludes that Complainant has failed to establish
a prima facie case that Respondent
lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See VeriSign Inc. v. VeneSign
The Panel therefore finds that Policy ¶ 4(a)(ii) has not been satisfied.
In light of Complainant’s failure to satisfy Policy ¶¶ 4(a)(i) and (ii), the Panel in its discretion declines to analyze Policy ¶ 4(a)(iii). 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 ; 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)).
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 <accreditationnow.net> domain name remain with Respondent.
John J. Upchurch, Panelist
Dated: December 22, 2008
National Arbitration Forum