Umpqua Investments, Inc. v. Private Registrations Aktien Gesellschaft
Claim Number: FA1005001324718
Complainant is Umpqua Investments, Inc. (“Complainant”), represented by William
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <strandatkinson.com>, registered with Network Solutions, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2010.
On May 14, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <strandatkinson.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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 email@example.com by e-mail. Also on May 18, 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 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 "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 <strandatkinson.com> domain name is identical to Complainant’s STRAND ATKINSON mark.
2. Respondent does not have any rights or legitimate interests in the <strandatkinson.com> domain name.
3. Respondent registered and used the <strandatkinson.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Umpqua Investments, Inc.,
Respondent registered the <strandatkinson.com> domain name November 16, 2008. Respondent’s disputed domain name resolves to a website that displays various third-party links to websites, some of which may be in competition 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.
Complainant alleges that it owns a trademark or service mark in its STRAND ATKINSON mark. The Panel finds that Complainant has failed to supply the Panel with sufficient evidence that it owns a valid trademark registration with a governmental trademark authority. However, the Panel finds that trademark registrations are not necessary to establish rights under Policy ¶ 4(a)(i) if Complainant can prove that it had common law rights in its mark prior to Respondent’s registration of the disputed domain name. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
To establish common law rights Complainant has provided its business registration paperwork and a screen shot to its official website that purports to establish common law rights. However, Complainant has failed to supply the Panel with sufficient evidence that indicates that Complainant has common law rights in its mark that predate Respondent’s registration of the disputed domain name. Therefore, the Panel finds that Complainant has failed to establish rights in the STRAND ATKINSON mark and that Complainant does not have standing to bring this Complaint under the UDRP. See Retail Indus. Leaders Assoc., Inc. v. R.I.L.A., FA 347841 (Nat. Arb. Forum Dec. 20, 2004) (“Complainant neither asserted common law rights in the RILA service mark nor supplied evidence that it has acquired common law rights in the mark. Therefore, the Panel finds that Complainant failed to establish common law rights in the RILA mark; therefore, Complainant lacks standing under the Policy.”); see also Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning).
The Panel finds that Policy ¶ 4(a)(i) has not been satisfied.
Because of the reasons the Panel gives in its discussion of Policy ¶ 4(a)(i), 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).
Based on the Panel’s finding that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel has declined to analyze Policy 4(a)(iii). See 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)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.
Accordingly, it is Ordered that the <strandatkinson.com> domain name REMAIN with Respondent.
James A. Carmody, Esq., Panelist
Dated: June 15, 2010
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