The Mrs. Fields' Brand, Inc. v. John Edwards
Claim Number: FA0811001234524
Complainant is The Mrs. Fields' Brand, Inc. (“Complainant”), represented by Michael
E. Mangelson, of Stoel Rives LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1800cookies.com>, registered with Dotregistrar.
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.
Bruce E. O’Connor as Panelist.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 17, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 19, 2008.
On November 18, 2008, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <1800cookies.com> domain name is registered with Dotregistrar and that Respondent is the current registrant of the name. Dotregistrar has verified that Respondent is bound by the Dotregistrar registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance the Policy.
On November 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 10, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on December 3, 2008.
An Additional Submission from Complainant was received on December 8, 2008, and was determined to be timely and complete under Supplemental Rule 7.
On December 12, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O’Connor as Panelist.
Complainant requests that the domain name in dispute be transferred from Respondent to Complainant.
Complainant asserts rights to the 1-800-COOKIES trademark (the “Mark”). Through continuous and extensive use since at least as early as June 1993, Complainant has established nationwide rights in the Mark recognized in federal trademark Registration No. 2,741,280, which was registered on the Principal Register on July 29, 2003. Complainant acquired rights in the Mark on October 10, 1997 pursuant to an assignment from R&R Bourbon Street, Inc., which had previously registered the Mark on the Supplemental Register (U.S. Reg. No. 1,892,835, Registration date: May 2, 1995). The assignment was recorded on November 25, 2002. Section 8 and 15 affidavits were accepted and acknowledged by the PTO on August 30, 2008, making the registration incontestable. The Mark is used to identify Complainant’s products, including cookies, brownies, muffins, and other bakery products.
Complainant asserts that the Mark
has been used continuously and extensively since at least as early as June
1993, and was registered on the United States Supplemental Register on May 2,
1995 and the Principal Register on July 29, 2003. When Complainant acquired the
Mark, it also acquired the proprietary toll-free telephone number 1-800-COOKIES
(the “Phone Number”). Complainant began using the Mark soon thereafter in its
catalogs and other marketing materials and as its primary telephone number for
Complainant contends that it is a
Complainant asserts that its
customers in the
Complainant contends that the <1800cookies.com> domain name (the “Domain Name”) at issue is confusingly similar to Complainant’s Mark. The Domain Name is identical to Complainant’s Mark and Phone Number, with the exception that the hyphens between the “1” and the “8” and between the “0” and the “c” have been omitted.
Complainant has established rights in the Mark through both its trademark use and its highly visible use of the Phone Number. Complainant contends that it is irrelevant that the Mark was registered on the Supplemental Register rather than the Principal Register at the time Respondent registered the Domain Name.
Respondent registered the Domain Name on December 13, 2000, over seven years after the Mark was first in use, five years after the Mark was registered with the PTO, and over three years after Complainant began using the Mark as its phone number.
Complainant asserts that the record
does not indicate that Respondent is or ever has been commonly known by
“1800cookies” or any derivation. There
is no mention anywhere on Respondent’s website of “1800cookies” or any
derivation thereof. Further,
Respondent’s only use of the Domain Name is as a web address that immediately
resolves into <battersanddoughs.com>.
Batters & Doughs Inc., a
Complainant also states that the Domain Name is not being used in connection with a bona fide offering of goods or services, nor is the Domain Name being put to a legitimate noncommercial or fair use. Instead, the Domain Name at issue, when entered into an Internet browser, immediately resolves to Respondent’s website at <battersanddoughs.com>, which offers baked goods and other related services that directly compete with those offered under Complainant’s Mark.
Moreover, any use to which Respondent may put the Domain Name would infringe Complainant’s rights in the Mark. Thus, regardless of Complainant’s uses or intentions for use of the Domain Name, it simply cannot have any rights or legitimate interests in the Domain Name.
Complainant contends that there are several clear indicia of bad faith in Respondent’s registration and use of the Domain Name. First, Respondent had actual or constructive knowledge of Complainant’s rights in the Mark and Phone Number when it registered the Domain Name. Second, Respondent, in using a domain name that is virtually identical to Complainant’s Mark and proprietary Phone Number, is attempting to redirect business from Complainant to Respondent. Third, there is evidence that Respondent acquired the Domain Name with the purpose of selling the Domain Name registration in excess of Respondent’s out-of-pocket costs directly related to the domain name.
Regarding Respondent’s actual or constructive knowledge of the Mark, Complainant asserts that at the time of Respondent’s registration of the Domain Name, the Mark had been in use for over seven years, registered for well over five years, and used as Complainant’s telephone number for over three years.
Even if Respondent registered the Domain Name without actual knowledge, Respondent had constructive knowledge because of the substantial rights Complainant had established in the Phone Number and Mark at the time Respondent registered the domain name. It does not matter that at the time Respondent registered the Domain Name, the Mark was registered on the Supplemental Register rather than the Principal Register, because if a complainant has established enough goodwill and reputation in a mark, that mark need not be registered at all for a respondent to register a domain name in bad faith.
At the time Respondent registered the Domain Name, in December 2000, the Mark had been used as Complainant’s toll-free Phone Number since 1997. Moreover, the Mark had been in use since 1993 and registered on the Supplemental Register since 1995. As of December 4, 2002, Complainant had spent more than $6,600,000 in advertising and promotional materials bearing the Mark and had sent over 10,000,000 catalogs featuring the Mark. In 2001, complainant shipped approximately 235,000 packages prominently displaying the Mark. To date Complainant has spent over $20,000,000 in promoting the Mark, and sent over 66,000,000 catalogs to consumers. The duration, extent and nature of Complainant’s use in commerce and advertising expenditures made in connection with the Mark established sufficient goodwill and reputation in the Mark to put Respondent on constructive notice at the time Respondent registered the Domain Name.
Regarding Respondent’s redirection of business, Complainant asserts that the Domain Name redirects Internet users to a retail confectionary that offers goods and services that directly compete with those goods and services offered under Complainant’s Mark. Panel decisions uniformly hold that using a domain name to redirect Internet users to competitors’ websites constitutes clear evidence of bad faith sufficient to satisfy the Policy. The problem is magnified in this situation, because Respondent incorporates in its Domain Name Complainant’s proprietary Phone Number to redirect Internet users to a website where Respondent sells goods and services in direct competition with Complainant.
Regarding Respondent’s intent in acquiring the Domain Name, Complainant asserts that Respondent has offered to sell the Domain Name registration to Complainant for a value far exceeding Respondent’s out-of-pocket costs directly related to the Domain Name. Complainant refers to the above-noted correspondence with counsel for Respondent, in which Complainant’s initial offer to acquire the Domain Name for $2,000 was rejected and in which Respondent eventually countered for $50,000. Complainant asserts that this is well above any cost Respondent incurred in registering and maintaining a domain name that merely resolves into Respondent’s actual website. Thus, these offers evidence bad faith on the part of Respondent in registering the Domain Name.
Complainant’s contentions are supported by declarations and documents.
Respondent contends that he acquired the Domain Name in December 2000 with the sole purpose of driving potential business to his web business. Respondent was unaware of the mark until he received a September 30, 2007 letter from counsel for Complainant. Respondent finds it odd that Complainant did not move the Mark to the Principal Register until 10 years after first use and did not inquire about the Domain Name until 14 years after first use.
Respondent states that he has been working in the wholesale bakery business since 1985 and has never associated the Mark with Complainant and does not know anyone who thinks of Complainant as the Mark.
Respondent contends that he acquired the Domain Name in good faith trying to help his business <BattersandDoughs.com>. Respondent keeps the registration current by using the Domain Name in his business with no intention of selling it until Complainant contacted him.
Respondent’s company has spent time, money, and efforts establishing and using the Domain Name and has been harassed by Complainant and has rejected its unfair offer to transfer the domain name.
The correspondence between Complainant’s counsel and Respondent’s counsel also sets forth Respondent’s defense.
Respondent contends that, through his company Batters and Doughs, he operates a business selling cakes and cookies at a web site using the Domain Name.
Respondent contends that he was unaware of Complainant’s use of the Mark or the Supplemental Registration at the time of registration of the Domain Name in December 2000. Respondent points out that Complainant did not record a 1997 assignment of ownership of the Mark against the Supplemental Registration until March 7, 2002. Respondent also points out that the application that led to the Principal Registration was not filed until April 1, 2002. Respondent contends that a search of the PTO records in December 2000 would not have revealed Complainant’s ownership of the Supplemental Registration, and that Complainant’s claim of Respondent’s bad faith was patently false. Respondent also argues out that any Supplemental Registration does not carry with it constructive notice of the Mark.
Respondent contends that he registered the Domain Name because of common knowledge that people search the web intuitively by typing generic terms into a search engine or browser. Such use according to Respondent is evidence of good faith use by Respondent in using the Domain Name to describe Respondent’s goods.
Respondent contends that he has been using the Domain Name open and notoriously since its registration as a web address that resolves to Respondent’s web site. Respondent asserts that he is not aware of a single instance of actual confusion between the Domain Name and the Mark.
Respondent contends that Complainant’s rights in the Mark are extremely weak. Respondent speculates that the results of a secondary meaning survey and a genericness survey would not be favorable to Complainant. Respondent asserts that he has not been able to find any use of the Mark other than as the Phone Number.
Respondent contends that any claim by Complainant against Respondent relating to the Domain Name is barred by laches, given the delay of Complainant in taking action against Respondent.
None of Respondent’s contentions, in the Response or in his counsel’s correspondence, are supported by any affidavits, declaration, or documents.
C. Additional Submissions
Complainant’s continuous and extensive use of the Mark is based in part upon use of its predecessor-in-interest from 1993 to 1997. Complainant moved the Mark to the Principal Register in 1993 after acquiring sufficient knowledge and expending sufficient resources to support the necessary Section 2(f) affidavit as evidence of the Mark’s acquired distinctiveness. Complainant states that it is common trademark practice to wait five years after using a mark to file a claim of acquired distinctiveness. Complainant also states that a Supplemental Registration does not constitute an admission that a mark has not acquired distinctiveness, citing 15 U.S.C. §1095.
Complainant contends that it inquired about the Domain Name shortly after it became aware that the Domain Name was registered to Respondent.
Complainant says that even if Respondent was personally unaware of the Mark, he was put on constructive notice through Complainant’s registration of the Mark, use of the Phone Number, and the common law rights surrounding both.
In response to Respondent’s contention that he registered the Domain Name trying to help his business, Complainant contends that using the trademark of another to redirect that other’s customers is not a bona fide offering of goods and services or a legitimate use of a domain name.
In response to Respondent’s contention that his company spent time, money, and effort establishing and using the Domain Name, Complainant contends that neither the Domain Name nor any derivation thereof appears on the web site of Respondent’s company and that Respondent offers no evidence of any other use or promotion of the Domain Name.
Complainant contends that the exchange of correspondence between its counsel and Respondent’s counsel is professional and that its offer to purchase was fair and generous in light of Complainant’s rights in the Mark and Phone Number and Respondent’s complete lack of rights in the Domain Name.
The certification required by ¶ 3(b)(xiv) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a complainant, and the certification required by ¶ 5(b)(viii) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a respondent. Without certification, a Panel may choose not to consider any factual statements, even in the case of pro se parties.
Complainant has provided the required ¶ 3(b)(xiv) certification, and declarations and documents. The Panel finds that the factual contentions made by Complainant in the Complaint and the Additional Submission are admissible and will be given weight as appropriate.
Respondent has provided neither the required ¶ 5(b)(viii) certification nor any supporting documents or declarations. The Panel finds that the contentions made in the Response are inadmissible and will be given no weight.
The Panel will consider the contentions of Respondent advanced by its counsel in correspondence with counsel for Complainant.
The following facts appear in the record and are critical to determination of this dispute:
June 1993 – Claimed first use of the Mark by Complainant’s predecessor-in-interest in conjunction with the sale of cookies
April 7, 1994 – Complainant’s predecessor files application for Supplemental Registration of the Mark with the PTO
May 2, 1995 – Supplemental Registration No. 1,892,835 for the Mark issued to Complainant’s predecessor
October 10, 1997 – Complainant acquires the Mark and the Phone Number
December 13, 2000 – Respondent registers the Domain Name
April 1, 2002 – Complainant files application for Principal Registration of the Mark with the PTO
November 25, 2002 – Complainant records in the PTO an assignment of the Mark against the Supplemental Registration
December 4, 2002 – Complainant executes (and later files) a Declaration of Acquired Distinctiveness for the Mark that claims substantially and exclusive use of the Mark since June 1993
July 29, 2003 – Principal Registration No. 2,714,280 for the Mark issued to Complainant
September 30, 2007 – Counsel for Complainant first notifies Respondent of the Mark and claims infringement by use of the Domain Name
October 22, 2007 – Counsel for Respondent first notifies Complainant of Respondent’s rights in the Domain Name
The record is sparse as to use of the Mark and the Domain Name. What seems to be certain is:
June 1993 to the present – Complainant and its predecessor use the Mark
1998 – Complainant sends out a holiday catalog bearing the Mark
December 13, 2000 to the present – Respondent claims use of the Domain Name to direct business to his web site
2001 to the present – Complainant sends out catalogs bearing the Mark and sells packages of goods bearing the Mark
Prior to the filing of the Complaint – Respondent is using the Domain Name to direct Internet users to his company’s web site <www.battersanddoughs.com>
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.”
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.
The Panel finds that Complainant has established rights in the Mark through its Principal Registration No. 2,714,280. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
The Panel does not find that Complainant has established rights in the Mark independent of that registration, and will discuss the pertinent facts in a subsequent section of this Decision.
The Panel finds that the Domain Name is confusingly similar to the Mark. The Domain Name differs from the Mark in two ways: (1) the hyphens have been removed; and (2) the generic top-level domain (“gTLD”) “.com” has been added to the end of the mark. The Panel finds that a domain name consisting of a mark with its hyphens removed remains confusingly similar to that mark. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark). The Panel finds that the addition of a gTLD also does not sufficiently distinguish a domain name from the mark it incorporates, because every domain name must include a top-level domain. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Complainant has met its burden of proof under ¶ 4(a)(i) of the Policy.
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.”).
The Panel finds that Complainant has established a prima facie case for Respondent’s lack of rights or legitimate interest in the Domain Name. The Panel accepts Complainant’s contention that Respondent’s use of the Domain Name infringes Complainant’s rights in the Mark arising out of its Principal Registration. The Mark and the Domain Name are confusingly similar and both are used in conjunction with the sale of the same goods, e.g., cookies.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of Paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts Complainant’s contention that Respondent is not commonly known by the Domain Name and has never been the owner or licensee of the Mark. The WHOIS record for the disputed domain name lists Respondent as “John Edwards.” Respondent is doing business as “Batters and Doughs.” See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). The circumstances of ¶ 4(c)(ii) are not present.
Respondent is making a commercial use of the Domain Name at its web site. The circumstances of ¶ 4(c)(iii) are not present.
Respondent contends that it has used the Domain Name since December 13, 2000. Any use of the Domain Name has been to direct users to Respondent’s web site that uses the name and mark BATTERS & DOUGHS and the domain name <battersanddoughs.com>. Such may be a bona fide offering of goods if Respondent was unaware, either actively or constructively, of the Mark prior to registration and use of the Domain Name.
Regarding Respondent’s actual knowledge of the Mark, Complainant’s speculations are unpersuasive. All evidence in the record of substantial commercial use (advertising, catalog distribution, sales) of the Mark by Complainant postdates Respondent’s registration and claimed use of the Domain Name.
Regarding Respondent’s constructive knowledge of the Mark, this cannot be any earlier than April 1, 2002, the filing date of the Principal Registration. This date also postdates Respondent’s registration and claimed use of the Domain Name.
The Panel nonetheless believes that the facts do not support the circumstances of ¶ 4(c)(i) of the Policy. Respondent’s evidence of use of the Domain Name prior to either actual or constructive knowledge of the Mark is weak. It is also implausible that the Domain Name could have been used on the very day that it was registered. Respondent is using the Domain Name to direct Internet users to Respondent’s website, wherein Respondent offers baked goods and related services that directly compete with Complainant’s business. See Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where the respondent used the disputed domain name to redirect Internet users to an online casino); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant has met its burden of proof under ¶ 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
The circumstances of ¶ 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under ¶ 4(a)(iii) of the Policy can be established.
¶ 4(b) of the Policy reads:
[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Proof of ¶ 4(a)(iii) generally requires more than assertions of bad faith. 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 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). Lack of rights or legitimate interest under Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad faith under Policy ¶ 4(a)(iii).
All of the circumstances in ¶ 4(b) of the Policy require Complainant to show that it had rights in the Mark prior to registration of the Domain Name.
Regarding Complainant’s rights in the Mark prior to registration, the evidence is: a single catalog page; a statement in a declaration as to distribution of catalogs in 2001; general statements of use in declarations of Complainant. The Panel finds this evidence insufficient to establish Complainant’s prior rights.
Also, Complainant acquired no rights in the Mark by reason of its Supplemental Registration.
Rights in the Mark began no earlier than April 1, 2002, the filing date of the application for Principal Registration No. 2,714,280.
Registration of the Domain Name on December 13, 2000 therefore preceded Complainant’s rights in the Mark.
Therefore, the Respondent did not register the Domain Name in bad faith. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of the unanimous view that the trademark must predate the domain name.”); see also SPB Software House v. SPB Online Servs., Ltd., FA 1067638 (Nat. Arb. Forum Oct. 17, 2007) (“When a domain name is registered before a trademark right is established, the registration of the domain name is not in bad faith under Policy ¶ 4(a)(iii) because the registrant could not have contemplated the complainant’s non-existent right.”).
Complainant has not met its burden of proof under ¶ 4(a)(iii) of the Policy.
Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Complaint be dismissed.
Bruce E. O’Connor, Panelist
Dated: December 26, 2008
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National Arbitration Forum
 See ¶ 10(d) of the Rules.
 By introducing and relying on this correspondence, and providing the required certification in its Complaint, Complainant cannot say that such correspondence does not meet the Panel’s requirements for admissibility.
 See the Declaration of Greg Berglund, Exhibit F to the Complaint, and the Declaration of Acquired Distinctiveness, Exhibit H to the Complaint.
 Exhibit C to the Complaint
 See the October 22, 2007 letter from counsel for Respondent to counsel for Complainant, Exhibit G to the Complaint
 See the web pages attached as Exhibit F to the Complaint
 See 15 U.S.C. §1057(b)
 See 15 U.S.C. §1057(c)
 See 15 U.S.C. §1094 (“[R] egistrations on the Supplemental Register shall not …receive the advantages of…” 15 U.S.C. §1057(b) and 15 U.S.C. §1057(c)).