Jeremy Wiles v. Nadeem Qadir
Claim Number: FA0912001297673
Complainant is Jeremy Wiles (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <creativelab.com>, registered with Enom, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 11, 2009.
On December 8, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <creativelab.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 4, 2010 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 January 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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 <creativelab.com> domain name is identical to Complainant’s CREATIVE LAB mark.
2. Respondent does not have any rights or legitimate interests in the <creativelab.com> domain name.
3. Respondent registered and used the <creativelab.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jeremy Wiles and his employer Creative Lab, LLC
join as Complainant. Complainant is a
video production company that has been in operation since 2004 as a registered
company in the state of
Respondent registered the <creativelab.com> domain name on September 15, 2000. Respondent’s disputed domain name redirects Internet users to the website resolving from the <usseek.com> domain name, which displays third-party links to various websites unrelated to Complainant.
Complainant offers evidence that Respondent has a history of registering domain names infringing upon the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See PHE, Inc. v. Qadir, D2005-1315 (WIPO Feb. 7, 2006); LTD Commodities, LLC v. Qadir, FA 636445 (Nat. Arb. Forum March 10, 2006); Symantec Corp. v. Qadir, D2005-1193 (WIPO Feb. 3, 2006).
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.
Complainant does not have a registered trademark for the CREATIVE LAB mark. However, registration is unnecessary pursuant to Policy ¶ 4(a)(i), provided Complainant can establish common law rights in the mark through a showing of secondary meaning. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant argues that it has established common law rights in the CREATIVE LAB mark pursuant to Policy ¶ 4(a)(i) through its history of continuous use and showing of secondary meaning. Complainant has used the CREATIVE LAB mark in connection with its offering of video production services since 2004. Complainant offers evidence of numerous clients since its inception in 2004 that include corporations, non-profit organizations, and politicians. Complainant’s official website is located at the <thecreativelaboratory.com>, where Complainant offers its video production and advertising services under the CREATIVE LAB mark. The Panel finds that Complainant has established common law rights by acquiring a secondary meaning in the CREATIVE LAB mark pursuant to Policy ¶ 4(a)(i) predating Respondent’s September 15, 2000 registration of the disputed domain name. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Complainant argues that Respondent’s <creativelab.com> domain name is identical to
Complainant’s CREATIVE LAB mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s CREATIVE LAB mark in its entirety, omits a space between the
terms, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the omission of spacing
and the addition of a gTLD are irrelevant in distinguishing a disputed domain
name from an established mark. See Microsoft Corp. v.
Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name
<microsoft.org> is identical to the complainant’s mark); see also
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Because of the
reasons the Panel gives in its discussion of Policy ¶ 4(a)(iii),
the Panel declines to analyze Policy ¶ 4(a)(ii). 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 VeriSign Inc. v. VeneSign
Complainant argues that it has common law rights in the CREATIVE LAB mark, however assuming that Complainant had enough evidence to support a finding that Complainant had acquired common law rights in the CREATIVE LAB mark through a finding of secondary meaning, Complainant’s rights would date back only as far as 2004. Complainant does not allege any rights in the CREATIVE LAB mark prior to 2004. Respondent registered the <creativelab.com> domain name on September 15, 2000, which is four years before Complainant existed as a company. Therefore, the Panel finds that Respondent’s registration of the <creativelab.com> domain name predates Complainant’s rights in the CREATIVE LAB mark and the Panel further finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Complainant 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 <creativelab.com> domain name REMAIN with Respondent.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 25, 2010
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