US Shrink Wrap Inc. v. Global Wrap
Claim Number: FA0910001288410
PARTIES
Complainant is US Shrink Wrap Inc. (“Complainant”), represented by Sherri Fisher,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <usshrinkwrap.com>, <usshrinkwrap.net>, <usshrinkwrap.info>, <usshrinkwrap.org>, <usshrinkwrap.biz>, and <usshrinkwrap.mobi>, registered with GoDaddy.com, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 8, 2009; the National Arbitration Forum received a
hard copy of the Complaint on October 12, 2009.
On October 9, 2009, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <usshrinkwrap.com>,
<usshrinkwrap.net>, <usshrinkwrap.info>, <usshrinkwrap.org>,
<usshrinkwrap.biz>, <usshrinkwrap.mobi> domain names are
registered with GoDaddy.com, Inc. and that the Respondent is the current
registrant of the names. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.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 20, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 9, 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 postmaster@usshrinkwrap.com,
postmaster@usshrinkwrap.net, postmaster@usshrinkwrap.info, postmaster@usshrinkwrap.org,
postmaster@usshrinkwrap.biz, and postmaster@usshrinkwrap.mobi by e-mail.
A timely Response was received and determined to be complete on
November 6, 2009.
Both parties submitted additional material subsequent to the initial
Complaint and Response. Some of these
submissions were timely and complete pursuant to Supplemental Rule 7, but for
the reasons set forth below the Panel declines to consider the substance of these
submissions.
On November 13, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that the disputed domain names registered by
Respondent are identical or confusingly similar to a trademark or service mark
in which Complainant has rights.
Complainant states as follows with regard to its rights in the relevant
mark:
The domain names <usshrinkwrap.com>, <usshrinkwrap.net>,
<usshrinkwrap.info>, <usshrinkwrap.org>, <usshrinkwrap.biz>,
and <usshrinkwrap.mobi> reproduce entirely the complainants pending
trademark US Shrink Wrap. The domain
names are strictly identical to US Shrink Wrap to the pending trademark
registered by complainant. Which lead
people to think that these domain names are specific to US Shrink Wrap, Inc.
which creates additional confusion.
Complainant also makes allegations relating to other requirements set
forth in the Policy.
B. Respondent
Respondent contends that Complainant has no rights in any trademark,
and makes allegations relating to other aspects of the Policy.
C. Additional Submissions
Under Paragraph 12 of the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”) the decision
whether to consider additional submissions rests within the sole discretion of
the Panel. In the view of the Panel, the
initial submissions adequately address a dispositive issue, while the parties’
Additional Submissions and other correspondence offer little or no assistance
in the resolution of that issue. The
Panel therefore declines to consider these materials.
FINDINGS
Complainant has failed to prove that it has
rights in a relevant trademark or service mark.
DISCUSSION
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.
Complainant claims trademark rights by virtue
of its pending application for registration with the U.S. Patent and Trademark
Office. A pending application for
registration with the U.S. Patent and Trademark Office is insufficient to
establish rights in a mark for the purpose of Policy ¶ 4(a)(i). See,
e.g., TMFT Enterprises, LLC v. Cosstick, FA 531518 (Nat. Arb. Forum Oct.
10, 2005). Complainant has neither
claimed common-law rights in its mark nor offered substantial evidence of such
rights. The Panel therefore finds that
Complainant has failed to prove it possesses the requisite trademark rights,
and thus has not satisfied Paragraph 4(a)(i) of the
Policy.
As the resolution of the preceding issue is
dispositive of the matter before the Panel, consideration of the remaining
elements set forth in Paragraph 4(a) of the Policy is unnecessary. See,
e.g., Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat.
Arb. Forum Dec. 28, 2006). Accordingly,
the Panel declines to reach those issues.
DECISION
Having considered the elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
David E. Sorkin, Panelist
Dated: November 25, 2009
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