Robert Zimmer v. Conveyor Group c/o Aaron Popejoy
Claim Number: FA0812001240484
Complainant is Robert Zimmer (“Complainant”), represented by Steven
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <imperialvalley.com>, registered with Network Solutions, Inc.
The undersigned certifies 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.
James Bridgeman, G. Gervaise Davis,
Complainant submitted a Complaint to the National Arbitration Forum
On January 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 27, 2009 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.
On January 27, 2009, the National Arbitration Forum granted Respondent’s January 26, 2009 Request for Extension of Time to Respond to Complaint with Complainant’s Consent, thereby setting a deadline of February 2, 2009 by which Respondent could file a Response to the Complaint.
A timely Response was received and determined to be complete on February 2, 2009.
An Additional Submission was received from Complainant on February 9, 2009, which was determined to be timely and complete under the National Arbitration Forum’s Supplemental Rule 7.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant began doing business in 1989 as Spectrum Advertising
After attempting to unsuccessfully negotiate with Respondent to reclaim
the domain name, Complainant sued Respondent in the Small Claims Division of
the California Superior Court in
Complainant states that it has been using the words IMPERIAL VALLEY “online since 1996” and that others “have come to recognize Complainant’s Mark as the distinctive identifier that it is.” Complainant contends that Respondent lacks rights or any legitimate interest in the disputed domain name as it is “intentionally using stolen property from another.” Complainant contends that Respondent registered the domain name in bad faith because it “illicitly registered the Disputed Domain through theft.”
Respondent contends that the domain name was lawfully transferred to it
Respondent disputes the assertion that Complainant has been using the
C. Additional Submissions
In its Additional Submission, Complainant offers the letter of a former
Complainant also presented the Declaration of the county’s Information
Systems Manager who stated that as of the time he left employment with the county
in 2007, Complainant owned the domain name and that the name was never owned by
Complainant began doing business in 1989 as Spectrum Advertising
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.
Preliminary Issue: Jurisdiction
Although the Panel does not believe it
is necessary to recite the entire history of the parties’ dispute over the
ownership of the domain name, it is appropriate to observe that there is a
related proceeding pending in the
Despite the relatively modest showing that must be made by a complaining party to establish rights in a domain name, in this case, the Panel concludes that Complainant has not passed that threshold.
The general rule, adopted in the Report of the
Second WIPO Internet Domain Name Process (
For example, in Puerto
Rico Tourism Co. v. Virtual Countries, Inc., D2003-1129 (WIPO Apr. 14,
2003), the panel refused to transfer the domain name <puertorico.com> to the complainant even though it
owned a number of registered marks that contained the words “Puerto Rico.” The panel reasoned that although the
complainant had used the words “
In Junta de Andalucia Consejeria de Turismo, Comercio y Deporte, Turismo Andaluz, S.A. v. Andalucia.com Limited, D2006-0749 (Oct. 13, 2006), relied upon by Complainant, the panel acknowledged that the complainant in that case had valid service marks issued by Spanish trademark authorities which included the word “Andalucia.” The panel concluded that “Andalucia” was the “dominant feature” in at least one of the marks and found that the domain name <andalucia.com> was confusingly similar to a mark in which the complainant had rights.
Because Complainant has no registered
trademark incorporating the words “
have been using the
1996 through 2003, thousands of unique visitors visited [the] Disputed Domain. Individuals and other entities have come to
recognize my Mark as the distinctive identifier that it is.
This evidence is insufficient to overcome the
general rule described above. Unlike Junta de Andalucia Consejeria de Turism,
Comercio y Deporte, Turismo Andaluz, S.A., Complainant here holds no trade or service marks using the term “
For these reasons, Complainant has failed to show that the domain name in dispute is identical or confusingly similar to a trademark or service mark in which he has rights.
Because the Panel
concludes that Complainant has not established that the domain name registered
by Respondent is identical or confusingly similar to a trademark or service
mark in which Complainant has rights, the Panel finds it unnecessary to
consider the remaining two elements of Paragraph 4(a) of the Policy. See Dreamgirls, Inc. v. Dreamgirls
Entm’t, D2006-0609 (WIPO
Accordingly, the Panel concludes that the Complaint should be denied.
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 Complaint is dismissed.
James Bridgeman, G.
Dated: February 25, 2009
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