national arbitration forum

 

DECISION

 

Fender Musical Instruments Corporation v. Christopher Ruth

Claim Number: FA1007001333857

 

PARTIES

Complainant is Fender Musical Instruments Corporation (“Complainant”), represented by Carl J. Schiessl, Arizona, USA.  Respondent is Christopher Ruth (“Respondent”), Connecticut, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fendercustomshop.com>, registered with Network Solutions, LLC.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2010.

 

On July 7, 2010, Network Solutions, LLC. confirmed by e-mail to the National Arbitration Forum that the <fendercustomshop.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 July 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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@fendercustomshop.com.  Also on July 8, 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 August 5, 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 (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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <fendercustomshop.com> domain name is confusingly similar to Complainant’s FENDER mark.

 

2.      Respondent does not have any rights or legitimate interests in the <fendercustomshop.com> domain name.

 

3.      Respondent registered and used the <fendercustomshop.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Fender Musical Instruments Corporation, sells and customizes musical instruments, amplifiers, and accessories.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FENDER mark (e.g., Reg. No. 805,075 registered on March 8, 1966).

 

Respondent, Christopher Ruth, registered the <fendercustomshop.com> domain name on November 26, 2003.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Prior panels have recognized a complainant’s rights in a mark when the complainant holds trademark registrations with the USPTO.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).  In this case, Complainant holds numerous trademark registrations with the USPTO for its FENDER mark (e.g., Reg. No. 805,075 registered on March 8, 1966).  Based on precedent and Complainant’s trademark registrations, the Panel finds Complainant has sufficiently proved its rights in the FENDER mark pursuant to Policy ¶ 4(a)(i).

 

Complainant avers Respondent’s <fendercustomshop.com> domain name is confusingly similar to its FENDER mark.  The panel in Whitney National Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007), held that addition of generic words with an obvious relationship to a complainant’s business renders a disputed domain name confusingly similar to a complainant’s mark pursuant to Policy ¶ 4(a)(i).  In addition, in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel found that the mere addition of the generic top-level domain (“gTLD”) “.com” is insufficient to differentiate a disputed domain name from a mark.  Here, Respondent adds the descriptive phrase “custom shop,” terms that reference Complainant’s custom guitar manufacturing shop, to Complainant’s mark in the disputed domain name.  Respondent also attaches the gTLD “.com” to Complainant’s mark.  Like the panels in Whitney National Bank and Reese, this Panel finds that the additions of descriptive terms and a gTLD do not adequately distinguish a domain name from a complainant’s mark.  Therefore, the Panel finds Respondent’s <fendercustomshop.com> domain name is confusingly similar to its FENDER mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

The Panel notes that Complainant must first make a prima facie case establishing Respondent lacks rights and legitimate interests in the <fendercustomshop.com> domain name pursuant to Policy ¶ 4(a)(ii).  See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).  Here, Complainant claims Respondent made no use of, or any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.  However, Complainant fails to allege any facts related to Respondent’s use or provide any screen shots of Respondent’s resolving website.  The Panel finds Complainant’s assertions, without any supporting evidence or analysis, do not sufficiently establish Respondent lacks rights or legitimate interests in the <fendercustomshop.com> domain name.  Therefore, the Panel finds Complainant has failed to make a prima facie case showing Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Yao Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Complainant has not alleged any facts related to Respondent's use of the disputed domain name. The Complaint merely asserts a legal conclusion. Thus, the Panel has no knowledge of Respondent's use of the domain name upon which to base a decision under Policy ¶ 4(a)(ii) and (iii).”); see also O.C. Seacrets, Inc. v. S. TradeWINs, Inc., FA 328042 (Nat. Arb. Forum Oct. 29, 2004) (“Complainant has provided no evidence as to the use of the <jamaicausa.com> domain name and has merely asserted that Respondent has no rights or legitimate interests, which is not sufficient to support a finding that Respondent lacks rights or legitimate interests.”).

 

The Panel finds Complainant has failed to satisfy Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Based on the Panel’s finding that Complainant has not satisfied Policy ¶ 4(a)(ii), the Panel has declined to analyze Policy ¶ 4(a)(iii).  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).

 

DECISION

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 <fendercustomshop.com> domain name REMAIN with Respondent.

 

 

James A. Carmody, Esq., Panelist

Dated:  August 9, 2010

 

 

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