Sunday LLC v. Trina S Buchanan and Atashnaa Werner and DON RICHARDS Guver and Sherry W Khatib
Claim Number: FA0912001298254
Complainant is Sunday LLC (“Complainant”), represented by Ryan
Mielcarek of The Mielcarek Law Firm LLC,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ask-sunday.com>, <makesunday.com>,
<ask-sunday.biz>, and <asksundayllc.com>, all registered
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 9, 2009; the National Arbitration Forum received a hard copy of the Complaint December 11, 2009.
On December 16, 2009 and December 24, 2009, Ano Regional Network Information Center Dba Ru-Center confirmed by e-mail to the National Arbitration Forum that the <ask-sunday.com>, <makesunday.com>, <ask-sunday.biz>, and <asksundayllc.com> domain names are registered with AAno Regional Network Information Center Dba Ru-Center and that Respondent is the current registrant of the names. Ano Regional Network Information Center Dba Ru-Center verified that Respondent is bound by the Ano Regional Network Information Center Dba Ru-Center registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 5, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 25, 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, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Preliminary Issue: Multiple Respondents
Given the outcome set out below, the Panel does not reach the issue of multiple Respondents and alleged aliases, however true those allegations might have been.
Preliminary Issue: Other Correspondence
Given the outcome set out below, the Panel does not reach the issue of “Other Correspondence” from an individual who purported to be the victim of identity theft, however true that allegation may have been.
Preliminary Issue: Redaction of Respondent’s Identity
Given the outcome set out below, the Panel does not reach the issue of Redaction of Respondent’s Identity or whether or not Respondent has engaged in identity theft or whether or not Respondent is actually the Respondent for purposes of the Policy.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ask-sunday.com>, <makesunday.com>, <ask-sunday.biz>, and <asksundayllc.com> domain names are confusingly similar to Complainant’s SUNDAY mark.
2. Respondent has no rights to or legitimate interests in the <ask-sunday.com>, <makesunday.com>, <ask-sunday.biz>, and <asksundayllc.com> domain names.
3. Respondent registered and used the <ask-sunday.com>, <makesunday.com>, <ask-sunday.biz>, and <asksundayllc.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding although the Forum
received “Other Correspondence” from an individual who alleged that Respondent engaged in identity theft and used aliases.
Complainant, Sunday LLC, provided a trademark application filed with the United States Patent and Trademark Office (“USPTO”) September 26, 2009, that asserts a first use in commerce date of September 17, 2009. Complainant asserts it provides online concierge services to its customers under its SUNDAY LLC mark. Complainant does not allege common law rights and did not provide evidence that the Panel could construe as allowing a finding that Complainant has common law rights in the SUNDAY 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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 provided the Panel with a trademark application filed with the United States Patent and Trademark Office (“USPTO”) September 26, 2009, that asserts a first use in commerce date of September 17, 2009. Complainant does not assert common law rights, nor provide evidence that may be construed as permitting a finding that Complainant has common law rights in its SUNDAY mark. The Panel finds that Complainant failed to establish registered trademark rights or common law rights in the SUNDAY mark. Complainant’s purported use of the SUNDAY mark for less than four months is not sufficient to meet the requirements of Policy ¶ 4(a)(i) in this instance and Complainant has not provided any evidence that might be considered to prove the acquisition of secondary meaning in the mark. Thus, the Panel finds Complainant failed at this time to establish legal or common law rights in the SUNDAY mark pursuant to Policy ¶ 4(a)(i). See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s pending trademark applications did not establish rights because “an application for [a] mark is not per se sufficient to establish rights [in] a trademark for the purposes of the [Policy]”); see also Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (“Complainant’s pending applications do not establish any enforceable rights until registration issues.”).
Having found that Complainant has not satisfied Policy ¶ 4(a)(i) because it failed to establish rights in the mark, the Panel does not reach the other two elements of the Policy. 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 Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Panel finds that Complainant did not satisfy the elements of ICANN Policy ¶ 4(a)(i).
For the aforementioned reasons the Panel declines to analyze Policy ¶ 4(a)(ii).
For the aforementioned reasons the Panel declines to analyze Policy ¶ 4(a)(iii).
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 ask-sunday.com>, <makesunday.com>, <ask-sunday.biz>, and <asksundayllc.com> domain names REMAIN with Respondent.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 15, 2010
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