redLantern, LLC v. Oriental Unlimited Inc.
Claim Number: FA1002001310133
Complainant is redLantern, LLC (“Complainant”), represented by Mark
I. Reichenthal, of Branfman Law Group, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <redlantern.com>, registered with Network Solutions, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 25, 2010.
On February 25, 2010, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <redlantern.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 1, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 22, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on March 22, 2010.
On March 31, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the exclusive owner of the REDLANTERN trademark.
Complainant has used the REDLANTERN mark since at least March 2008 in connection with the marketing of goods and services related to computer software applications.
Respondent registered the <redlantern.com> domain name on December 16, 2003, and renewed the same registration on August 28, 2008.
The <redlantern.com> domain name is substantively identical to Complainant’s REDLANTERN mark.
The disputed domain name is not used by Respondent in connection with a functioning website, but is employed by it to divert Internet users to Respondent’s main website at which it markets oriental furniture.
Although Complainant and Respondent are not in competition in the same commercial market, Respondent’s use of the subject domain name could lead to consumer confusion between Complainant’s mark and Respondent’s domain name.
Between May of 2008 and April of 2009, Complainant initiated and continued frequent communications with Respondent in an effort to persuade Respondent to sell the <redlantern.com> domain name to Complainant for a negotiated price.
Those negotiations failed.
Respondent is passively holding the subject domain name, and has demanded an exorbitant price to transfer the domain name to Complainant.
Respondent has not been commonly known by the contested domain name and it has never obtained any trademark or service mark rights in that domain name.
Respondent registered and uses the same domain name in bad faith.
The correct date of Respondent’s initial registration of the contested domain name was November 16, 2004.
By its own admission, Complainant first began to use the REDLANTERN mark years after Respondent had registered its <redlantern.com> domain name.
Respondent was not in a position to know of Complainant’s interest in using the REDLANTERN mark when the domain name was first registered.
Complainant admits that it and Respondent do not compete in the same industry.
The disputed domain name was selected by Respondent for its Asian furniture and lighting marketing programs because of its obvious relationship to positive aspects of Asian culture and traditions, including its association with the symbolic color red.
Respondent is developing a Red Lantern ecommerce store to advance its Asian furniture and lighting marketing programs.
Respondent has never attempted to sell the disputed domain name to Complainant or any other party, and Respondent has always made it clear that it had no intention of selling the domain name to Complainant despite Complainant’s repeated requests that it do so.
Respondent has never attempted to compete with or disrupt Complainant’s computer software business.
Complainant filed the instant Complainant in this proceeding only when it finally realized that Respondent was sincere in repeatedly refusing to sell it the disputed domain name.
Complainant is guilty of attempted reverse domain name hijacking.
(1) the domain name registered by Respondent is substantively identical to a trademark or service mark in which the Complainant has rights;
(2) the same domain name was not registered or used by Respondent in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights to or legitimate interests in the domain name; and
iii. the same domain name was registered and used by Respondent in bad faith.
In order to prevail on its Complaint, Complainant must demonstrate, under the third branch of Policy ¶ 4(a), that Respondent both registered, and has since used, the disputed domain name in bad faith. This it cannot do. It is evident from the allegations of the Complaint that Complainant cannot succeed in proving that Respondent was even aware of the existence of Complainant’s claimed mark when the contested domain name was first registered in 2004, let alone that the domain name was registered in bad faith at that time, because Complainant did not have or begin to assert any rights in the claimed mark until years later, in 2008. We are therefore forced to the conclusion that the Complaint must fail and be dismissed for lack of evidence of bad faith registration of the subject domain name as is required by Policy ¶ 4(a)(i).
This being so, it is unnecessary for us to examine the contentions offered by the parties under the other heads of Policy ¶ 4(a). See, for example, Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that, because a complainant must prove all three elements required under the Policy, its failure to prove any one of those elements makes inquiry into the remaining ones unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (a panel there deciding not to inquire into a respondent’s rights or legitimate interests, or its registration and use of a disputed domain name in bad faith, where a complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Accordingly, Complainant having failed to established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED, and this proceeding is DISMISSED.
Terry F. Peppard, Panelist
Dated: April 14, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum