redLantern, LLC v. Oriental
Unlimited Inc.
Claim Number: FA1002001310133
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@redlantern.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
(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.
DISCUSSION
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)).
DECISION
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
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