national arbitration forum
DECISION
VOX Footwear, Inc. v. ipdream.net / Dan Schwartz
Claim Number: FA1105001386777
Complainant is VOX Footwear, Inc. (“Complainant”), represented by Eric A. Hanscom of InterContinental IP, California, USA. Respondent is ipdream.net / Dan Schwartz (“Respondent”), represented by Lionel P Bochurberg of Walraven & Lehman LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <voxshoes.com>, <voxfootwear.com>, and <voxfootware.com>, registered with eNom, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2011; the National Arbitration Forum received payment on May 3, 2011.
On May 3, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <voxshoes.com>, <voxfootwear.com>, and <voxfootware.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 May 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2011 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@voxshoes.com, postmaster@voxfootwear.com, and postmaster@voxfootware.com. Also on May 4, 2011, 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 May 24, 2011.
On June 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
[a] Complainant owns a federal trademark registration for the VOX & DESIGN mark which registration certificate recites a first use date of May 6, 2005 and a filing date of June 7, 2005.
[b] Respondent’s registered domain names <voxshoes.com>, <voxfootwear.com>, and <voxfootware.com> are confusingly similar to Complainant’s VOX & DESIGN trademark.
[c] Respondent has no rights or legitimate interests in these domain names.
[d] Respondent has registered and is using these domain names in bad faith.
B. Respondent
[a] Respondent registered the domain names on March 9, 2005, which was before Complainant started using the trademark VOX, before Complainant filed a trademark application for this mark, and even before Complainant was incorporated on May 4, 2005. Therefore, Complainant had no rights to the VOX mark predating the date on which Respondent registered its domain names.
Complainant owns trademark registration number 3,103,715 for the VOX mark, whose registration certificate recites a first use date of May 6, 2005 and a filing date of June 7, 2005.
Respondent registered the disputed domains on March 9, 2005, a date preceding both Complainant’s first use date and the filing date of Complainant’s application.
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."
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.
Paragraph 4(a)(1) of the Policy requires Complainant to show that Respondent’s domain names are identical or confusingly similar to Complainant’s mark. This provision necessarily implies that Complainant’s rights predate the registration of Registrant’s domain name. Expert Computers, Inc. v. Name Delegation, FA 787937 (Nat. Arb. Forum Oct. 24, 2006). Respondent registered the disputed domain names on March 9, 2005, which is prior to Complainant’s first use of its trademark and prior to Complainant’s filing of its application. As Complainant has not shown that its rights predate the registration of Registrant’s domain names, Complainant has not satisfied paragraph 4(a)(1) of the Policy.
Because the Panel has determined that Complainant has not satisfied this requirement of Policy ¶ 4(a)(i), there is no need to determine whether Respondent has rights or legitimate interests in the domain names or whether Respondent registered or used the domain names in bad faith. Nevertheless, it should be noted that since Respondent’s domain registrations predate Complainant’s rights to the mark, Respondent could not have registered the disputed domains in bad faith under Policy ¶ 4(a)(iii).
As Complainant failed to establish the required elements under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <voxshoes.com>, <voxfootwear.com> and <voxfootware.com> domain names REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: June 17, 2011
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