800 Lo Ayudan, Inc. v. Joe Argiz
Claim Number: FA1011001357133
Complainant is 800 Lo Ayudan, Inc. (“Complainant”), represented by Renee Jamal Kattan, Florida, USA . Respondent is Joe Argiz (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <800loayudan.com>, registered with GoDaddy.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2010; the National Arbitration Forum received payment on November 8, 2010.
On November 8, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <800loayudan.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 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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 postmaster@800loayudan.com. Also on November 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 December 8, 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.
Respondent submitted a late Response in the form of a letter which was determined to be deficient by the Panel.
On December 14, 2010, the Complainant timely filed an Additional Submission.
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 a timely response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <800loayudan.com> domain name is identical to Complainant’s 800LOAYUDAN mark.
2. Respondent does not have any rights or legitimate interests in the <800loayudan.com> domain name.
3. Respondent registered and used the <800loayudan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
C. Complainant filed an Additional Submission and Annex thereto which were taken into consideration by the Panel.
Complainant, 800 Lo Ayudan, Inc., alleges that it offers services that connect injured persons with both physicians and attorneys. Complainant claims that it provides its services under the 800LOAYUDAN mark.
Respondent, Joe Argiz, registered the <800loayudan.com> domain name on March 7, 2008.
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 provide evidence that it holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) or any other registry for the 800LOAYUDAN 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 states that it is a Florida corporation that operates under the name “800loayudan, Inc.” Complainant submits a copy of its Articles of Incorporation. This document shows a filing date of November 3, 2006. In addition, Complainant claims the 800LOAYUDAN mark has been significantly and widely promoted to the consuming public. However, Complainant does not provide any evidence of its promotion or continuous use in commerce. Therefore, the Panel finds Complainant has failed to provide evidence demonstrating it has established secondary meaning in the mark. Accordingly, the Panel finds Complainant fails to establish common law rights in the 800LOAYUDAN mark under Policy ¶ 4(a)(i). See OCZ Tech. Group, Inc. v. Megazine Publ’ns, FA 244094 (Nat. Arb. Forum Apr. 29, 2004) (“The UDRP has consistently been interpreted as requiring a Complainant to establish rights that predate Respondent’s registration of the disputed domain name.”); see also Bus. Architecture Group, Inc. v Reflex Publ’g., FA 97051 (Nat. Arb. Forum June 5, 2001) (the complainant did not adequately demonstrate common law rights that would have predated the domain name registration); see also 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 Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)). Even taking into consideration the Complainant’s Additional Submission the Panel is unable to find evidence that Complainant has registered or common law rights in the 800LOAYUDAN mark. Should such evidence exist, Complainant is invited to note that this Decision is rendered without prejudice.
The Panel finds Complainant has failed to satisfy Policy ¶ 4(a)(i).
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)).
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 <800loayudan.com> domain name REMAIN WITH Respondent.
James A. Carmody, Esq., Panelist
Dated: December 20, 2010
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