FJR Advisors, LLC v. Proquest Technologies, Inc.
Claim Number: FA1004001322073
Complainant is FJR Advisors, LLC (“Complainant”), represented by Frank
X. Curci, of
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nevercoldcallagain.com>, registered with Tucows Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2010.
On April 30, 2010, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <nevercoldcallagain.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 May 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 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 postmaster@nevercoldcallagain.com. Also on May 5, 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 June 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" 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 <nevercoldcallagain.com> domain name is identical to Complainant’s NEVER COLD CALL AGAIN mark.
2. Respondent does not have any rights or legitimate interests in the <nevercoldcallagain.com> domain name.
3. Respondent registered and used the <nevercoldcallagain.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, FJR Advisors, LLC, registered its NEVER COLD CALL AGAIN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,568,707 issued January 27, 2009). Complainant has used the mark in connection with sales training seminars and personal coaching services in the field of sales training since 2003.
Respondent, Proquest Technologies, Inc., registered the <nevercoldcallagain.com> domain name on May 15, 2001. The disputed domain name resolves to a website offering real estate agent sales and marketing services. Respondent is a competitor to Complainant in the field of sales training.
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 asserts it has established rights in its NEVER COLD CALL AGAIN mark via its trademark registration with the USPTO (Reg. No. 3,568,707 issued January 27, 2009). The Panel finds registration with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
Complainant contends that Respondent’s <nevercoldcallagain.com> domain name
is identical to Complainant’s NEVER COLD CALL AGAIN mark. Complainant argues that the disputed domain
name does no more to distinguish the domain name than to remove spaces between
the terms of the mark and add the generic top-level domain (“gTLD”)
“.com.” The Panel finds Respondent’s
disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the
space between terms of a mark still rendered the <gwbakeries.mobi> domain
name identical to the complainant’s GW BAKERIES mark); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see
also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding
that the mere addition of the generic top-level domain “.com” is insufficient
to differentiate a disputed domain name from a mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat.
Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant
when establishing whether or not a mark is identical or confusingly similar,
because top-level domains are a required element of every domain name.”).
The Panel finds the elements of Policy ¶ 4(a)(i) 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 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.”).
Complainant alleges that Respondent registered its <nevercoldcallagain.com> domain name in bad faith. However, Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). Respondent registered the disputed domain name in 2001, two years prior to Complainant’s asserted first use in commerce in 2003 and eight years prior to Complainant’s trademark registration with the USPTO of the NEVER COLD CALL AGAIN mark in 2009. Therefore, the Panel finds that Respondent’s registration of the disputed domain name predates Complainant’s rights in the mark, which is evidence that Respondent has not registered or used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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); see also TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005) (because the respondent’s domain name registration predated the complainant’s trademark filing date and alleged date of first use, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”).
The Panel finds Complainant did not satisfy 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 <nevercoldcallagain.com> domain name REMAIN with Respondent.
John J. Upchurch, Panelist
Dated: June 14, 2010
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