Claim Number: FA1006001328554
Complainant is Lawrence
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <internationalcircuit.com>, registered with Register.com, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 6, 2010.
On June 7, 2010, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <internationalcircuit.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 June 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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 June 16, 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 July 7, 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 (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 <internationalcircuit.com> domain name is identical to Complainant’s INTERNATIONAL CIRCUIT mark.
2. Respondent does not have any rights or legitimate interests in the <internationalcircuit.com> domain name.
3. Respondent registered and used the <internationalcircuit.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lawrence Gurreri, provides travel services under the INTERNATIONAL CIRCUIT mark. Complainant originally registered the <internationalcircuit.com> domain name on October 29, 2003, and operated his travel business at the resolving website. In October 2008, an Internet user hijacked and deactivated Complainant’s Yahoo email account. Complainant stored his GoDaddy login and password information in the Yahoo account and, consequently, lost access to his GoDaddy account and the <internationalcircuit.com> domain name. The disputed domain name was transferred from GoDaddy to Register.com, Inc. on October 12, 2008.
Respondent registered the <internationalcircuit.com> domain name on October 13, 2008. The disputed domain name resolves to a website that provides information about Complainant and offers services which compete with Complainant’s business. The resolving website also provides links to third-party websites, including various travel websites.
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 does not hold trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the INTERNATIONAL CIRCUIT mark. However, federal trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Prior panels have found that a governmental registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. 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 Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant does not allege any common law rights in the INTERNATIONAL CIRCUIT mark in his Complaint under Policy ¶ 4(a)(i). Complainant does claim to use the INTERNATIONAL CIRCUIT mark in connection with his travel business. Complainant states “International Circuit” is his fictitious name and that he owns a business checking account in this name. Complainant also provides a screen shot of the website that currently resolves from the <internationalcircuit.com> domain name. Text on this webpage states:
After backpacking throughout Europe, our founder Larry Gurreri recognized the importance of having current, reliable, and comprehensive travel information readily available and the lack there of…International Circuit’s goal is to satisfy the traveler community’s need…Larry also discovered that the overwhelming majority of travelers want to share their travel experiences. International Circuit provides the vehicle for and encourages all travelers to share their experiences either by submitting travel reviews, contributing to our community travel forums, or by adding to our travel resource directory.
Although Complainant provides some evidence of an association between his personal name and the INTERNATIONAL CIRCUIT mark, he has not established sufficient secondary meaning in the mark to create common law rights in the mark. See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); 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). Therefore, the Panel finds Complainant has failed to established rights in the INTERNATIONAL CIRCUIT mark pursuant to Policy ¶ 4(a)(i).
Furthermore, the Panel finds the alleged theft of a domain name falls outside the narrow scope of the UDRP policy. See Commercial Publ’g Co. v. EarthComm., Inc., FA 95013 (Nat. Arb. Forum July 20, 2000) (finding that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations’ . . . The [P]olicy relegates all ‘legitimate disputes’ to the courts”); see also SBBnet, Inc. v. Mark Rodriguez d/b/a GreenMarket Ventures, LLC, FA 1248881 (Nat. Arb. Forum Apr. 24, 2009) (finding the Policy applies to a relatively narrow class of cases and that more complex “issues are outside the scope of the UDRP and thus are to be resolved in courts of law.”).
The Panel finds 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.
Accordingly, it is Ordered that the <internationalcircuit.com> domain name REMAIN with Respondent.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 12, 2010
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