Mitek Corporation v. Xedoc
Holding SA
Claim Number: FA1007001337379
PARTIES
Complainant is Mitek Corporation (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thundervalley.com>, registered with Fabulous.com
PTY LTD.
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 26, 2010.
On July 26, 2010, Fabulous.com PTY LTD. confirmed by e-mail to
the National Arbitration Forum that the <thundervalley.com> domain name is
registered with Fabulous.com PTY LTD. and
that the Respondent is the current registrant of the name. Fabulous.com
PTY LTD. has verified that Respondent is bound by the Fabulous.com PTY LTD. 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 28, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of August 17,
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@thundervalley.com. Also on July 28, 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.
A timely Response was received and determined to be complete on August 5, 2010.
On August 16, 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.
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
<thundervalley.com> domain name is confusingly similar to
Complainant’s
2. Respondent does not have any rights or legitimate interests in the <thundervalley.com> domain name.
3. Respondent registered and used the <thundervalley.com> domain name in bad faith.
B. Respondent submitted a response denying each
of Complainant’s assertions and pointing out that Complainant failed to submit
any evidence whatsoever of either registration of the
FINDINGS
Complainant claims that in 1996, it registered the domain name “thundervalley.com”
with Network Solutions. Further, Complainant
says that in 2006, the domain name came up for renewal, but the registrar’s
notification to renew was sent to an incorrect address. As a result, the domain name was accidently
not renewed by Complainant and was registered by Respondent.
Complainant does not claim any registration of the trademark but has
attached as exhibits to the Complaint photographs (apparently taken in 2010)
showing the use of
Respondent points out multiple uses of
The Complaint fails for want of proof.
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:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 has provided no
evidence of common law rights, nor does Complainant
even explain what goods or services are offered under the asserted mark and, as
such, it is impossible to know what rights are actually claimed. Respondent argues, and the Panel concurs,
that the photographs submitted by Complainant do not establish that the mark
has ever been seen by anyone other than Complainant, that the mark has actually
been used in commerce, or that the mark has acquired secondary meaning. All the photographs attached to the Complaint
are dated July 2010 and there is no evidence of the mark being used at any time
before that date. Complainant has not provided
any evidence in the form of advertising expenses, unsolicited media coverage,
consumer or other third-party recognition, which are traditional means of
proving common law rights. The Panel
finds that Complainant has provided an inadequate showing of secondary meaning
and as such has no common law rights in the
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark,
there is no need to analyze the other two elements of the Policy. 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 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)).
DECISION
Since the Complainant has failed to establish all three elements
required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
James A.Carmody, Esq., Panelist
Dated: August 18, 2010
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