LD Products, Inc. v. Webatopia Marketing Limited
Claim Number: FA1011001360908
Complainant is LD Products, Inc. (“Complainant”), represented by Matthew M. Thomson of Kronenberger Burgoyne, LLP, California, USA. Respondent is Webatopia Marketing Limited (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <123inkjetx.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.
Honorable Paul A. Dorf (Ret.) 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 <123inkjetx.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 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@123inkjetx.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 Honorable Paul A. Dorf (Ret.) 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 <123inkjetx.com> domain name is confusingly similar to Complainant’s 123INKJETS mark.
2. Respondent does not have any rights or legitimate interests in the <123inkjetx.com> domain name.
3. Respondent registered and used the <123inkjetx.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LD Products, Inc., uses its 123INKJETS mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,212,566 issued February 27, 2007), in connection with online retail store services featuring inkjet printer cartridges, inkjet printer ink, filled inkjet printer ink cartridges, toner, toner cartridges and related accessories. Complainant asserts common law rights in the 123INKJETS mark dating back to 1999.
Respondent, Webatopia Marketing Limited, registered the disputed domain name on October 19, 2004. The disputed domain name resolves to a click-through website which features links to Complainant’s competitors.
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.
Earlier panels have asserted that when a complainant’s federal trademark registration does not predate the registration of a respondent’s disputed domain name, the complainant may provide evidence of common law rights in said mark. See 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). In this instance, Respondent registered the <123inkjetx.com> domain name on October 19, 2004, predating Complainant’s registration of the 123INKJETS mark with the USPTO (Reg. No. 3,212,566 issued February 27, 2007). Complainant argues that it holds common law rights in the 123INKJETS mark, however, it fails to set forth sufficient evidence supporting this fact. The Panel finds that Complainant has not met its burden of proving common law rights pursuant to Policy ¶ 4(a)(i) and therefore, the claim is denied. 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).
The Panel finds Policy ¶ 4(a)(i) has not been satisfied.
The Panel declines to analyze the claim under Policy ¶ 4(a)(ii) because Complainant has failed to satisfy Policy ¶ 4(a)(i). 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).
Based on the fact that Complainant has not satisfied its burden under Policy ¶ 4(a)(i), the Panel may choose not to analyze the claim under 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <123inkjetx.com> domain name REMAIN WITH Respondent.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 7, 2011
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