LD Products, Inc. v. ZincFusion Limited
Claim Number: FA1011001360902
Complainant is LD Products, Inc. (“Complainant”), represented by Matthew M. Thomson of Kronenberger Burgoyne, LLP, California. Respondent is ZincFusion Limited (“Respondent”), Gibraltar.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <123inkjsts.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2010; the National Arbitration Forum received payment on December 1, 2010.
On November 30, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <123inkjsts.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 December 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@123inkjsts.com. Also on December 2, 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 29, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <123inkjsts.com> domain name is confusingly similar to Complainant’s 123INKJETS mark.
2. Respondent does not have any rights or legitimate interests in the <123inkjsts.com> domain name.
3. Respondent registered and used the <123inkjsts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LD Products, Inc., provides evidence that it owns rights in the 123INKJETS mark which it uses in connection with its online retail business specializing in printer supplies and accessories. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the 123INKJETS mark (e.g., Reg. No. 3,212,566 issued Feb. 27, 2007).
Respondent, ZincFusion Limited, registered the <123inkjsts.com> domain name on October 19, 2004. The disputed domain name resolves to a parked website displaying pay-per-click links which are related to Complainant’s business.
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 holds a trademark registration with the USPTO for its 123INKJET mark (e.g., Reg. No. 3,212,566 issued Feb. 27, 2007). However, Respondent registered the disputed domain name in 2004, before both the filing date and registration date of Complainant’s mark. For this reason, Complainant asserts common law rights in its 123INKJET mark dating back to 1999. Yet, Complainant fails to provide sufficient evidence of any secondary meaning or rights in the mark prior to the date of Respondent’s registration of the <123inkjsts.com> domain. 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 chooses to deny the claim under a Policy ¶ 4(a)(i) analysis because Complainant has failed to provide sufficient evidence of common law rights in the 123INKJETS mark.
The Panel finds Policy ¶ 4(a)(i) has not been satisfied.
Because the Panel has found that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze Policy ¶ 4(a)(ii). See Vail Corp. & Vail Trademarks, Inc. v. Resort Destination Mktg., FA 1106470 (Nat. Arb. Forum Jan. 8, 2008) (finding it unnecessary to examine all three elements of the Policy once shown the complainant could not satisfy one element).
The Panel need not analyze Policy ¶ 4(a)(iii) based on the fact that Complainant has not satisfied his burden under Policy ¶ 4(a)(i). 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <123inkjsts.com> domain name REMAIN with Respondent.
John J. Upchurch, Panelist
Dated: January 10, 2011
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