national arbitration forum

 

DECISION

 

Zerorez Franchising Systems v. Whois Privacy Protection Service, Inc. c/o Whois Agent

Claim Number: FA 1354124

 

PARTIES

Complainant is Zerorez Franchising Systems (“Complainant”), represented by Todd E. Zenger of Kirton & McConkie , Utah, USA.  Respondent is Whois Privacy Protection Service, Inc. c/o Whois Agent (“Respondent”), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zerorez.com>, registered with GODADDY.COM, INC.

 

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2010; the National Arbitration Forum received payment on October 22, 2010.

 

On October 25, 2010, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <zerorez.com> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name.  GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@zerorez.com.  Also on November 1, 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 November 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:

 

Complainant is a national franchise company involved in the carpet and living surfaces cleaning industries. 

 

Complainant has used the ZEROREZ service mark in connection with its patented cleaning system since September 24, 2003. 

 

Complainant has registered its ZEROREZ mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,912,417 filed October 31, 2003; issued December 21, 2004). 

 

Respondent registered the disputed domain name on April 30, 1999. 

 

The disputed domain name resolves to an inactive website. 

 

Respondent’s <zerorez.com> domain name is identical to Complainant’s ZEROREZ mark.

 

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

 

Respondent registered and uses the <zerorez.com> domain name in bad faith.

 

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

 

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 a 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.

 

In the ordinary course, we would address the elements of Policy ¶ 4(a) in the order in which they are presented above.  In this instance, however, we find it advisable to consider first, and exclusively, the question of bad faith registration of the contested domain name, because, in the particular circumstances of this proceeding, that issue resolves the entire controversy.

 

The reason for this is that the Policy requires Complainant to prevail on each and every element of Policy ¶ 4(a) in order to prevail in the proceeding as a whole.  If, therefore, Complainant fails as to any one of them, its case fails altogether. And, in that event, consideration of the Complaint may begin and end with examination of the element as to which Complainant has failed to provide proof upon which it can prevail. See Post.Com Limited v. Peter Neilson, D2002-0690 (WIPO Sept. 17, 2002):

 

In this Panel’s view, the Complainant has not established … that the Domain Name was registered by the Respondent in bad faith.... In the light of this finding the Panel does not need to consider paragraphs 4(a)(i) and (ii) of the Policy.

 

To the same effect, see also Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., D2010-0470 (WIPO May 19, 2010).

 

Registration and Use in Bad Faith

 

In this case, it is conceded by Complainant that Respondent registered the disputed domain name on April 30, 1999.  Complainant also concedes that its rights in its ZEROREZ service mark date from its first use of the mark on September 24, 2003.  Therefore, Respondent’s domain name registration predates Complainant’s rights in the mark.  On these facts, we must conclude that Respondent could not have registered the disputed domain name in bad faith within the meaning of Policy ¶ 4(a)(iii) because Complainant had no rights to the mark at the moment of domain name registration, or, for that matter, for years afterward.  See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where a respondent registered a contested domain name prior to a complainant’s first use of a mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith registration where a respondent registered the domain name there in question before the filing of an application for registration and commencement of use of a trademark by a complainant).

 

The Panel therefore finds that Policy ¶ 4(a)(iii) has not been satisfied.

 

Complainant having failed to carry its burden on the point of bad faith registration of the contested domain name, it is unnecessary for the Panel to consider or decide the issues of the respective rights of the parties otherwise presented by the Complaint.  We therefore decline to examine those issues.

 

DECISION

Complainant having failed to establish one of the three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.

 

Accordingly, it is Ordered that the Complaint herein, seeking transfer of the domain name <zerorez.com> from Respondent to Complainant, must be, and it is hereby, dismissed.

 

 

 

Terry F. Peppard, Panelist

Dated:  December 6, 2010

 

 

 

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