national arbitration forum
Phoenix Footwear Group, Inc. v. Torpedo Search LLC. c/o Domain Administration
Claim Number: FA1002001308884
Complainant is Phoenix
Footwear Group, Inc. (“Complainant”),
represented by James
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <softwalk.com>, registered with Moniker.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On February 23, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <softwalk.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 February 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on February 25, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <softwalk.com> domain name is identical to Complainant’s SOFTWALK mark.
2. Respondent does not have any rights or legitimate interests in the <softwalk.com> domain name.
3. Respondent registered and used the <softwalk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Phoenix Footwear Group, Inc., has continuously used the SOFTWALK mark in connection with its footwear products since 2000. Complainant holds a registration of the SOFTWALK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,899,145 issued November 2, 2004, filed October 28, 2003).
Respondent, Torpedo Search LLC. c/o Domain Administration, registered the <softwalk.com> domain name on December 14, 1998. The disputed domain name resolves to a website that displays hyperlinks to third-party websites that directly compete with Complainant.
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.
Identical and/or Confusingly Similar
Respondent, Torpedo Search LLC. c/o Domain Administration, registered the <softwalk.com> domain name on December 14, 1998. The Panel finds that Complainant has established rights in the SOFTWALK mark under Policy ¶ 4(a)(i) as of October 28, 2003 through its registration of SOFTWALK mark with the USPTO (Reg. No. 2,899,145 issued November 2, 2004, filed October 28, 2003). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
The <softwalk.com> domain name contains Complainant’s SOFTWALK mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the <softwalk.com> domain name is identical to Complainant’s SOFTWALK mark under Policy ¶ 4(a)(i) because the mere addition of the “.com” gTLD to a mark does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
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 C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).
Registration and Use in Bad Faith
As discussed in the Panel’s Policy ¶ 4(a)(i) analysis, the earliest Complainant can establish rights in the mark is October 28, 2003, the filing date of Complainant’s application for federal trademark registration. However, Respondent registered the <softwalk.com> domain name on December 14, 1998, which is nearly five years prior to Complainant’s filing date. Complainant does assert that it began using the SOFTWALK in September of 2000; however, this first use date is still predated by Respondent’s registration date by nearly two years. Therefore, the Panel finds that Respondent’s registration of the <softwalk.com> domain name predates Complainant’s rights in the SOFTWALK mark. Accordingly, 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.
Having failed to established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <softwalk.com> domain name REMAIN with Respondent.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 8, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum