US Shrink Wrap Inc. v. Global Wrap
Claim Number: FA0910001288410
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.
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.
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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com 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.
Complainant requests that the domain names be transferred from Respondent to 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.
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.
Complainant has failed to prove that it has rights in a relevant trademark or service mark.
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.
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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