Best Little Sites, LLC v. Adobo Games / Argene Tanyong
Claim Number: FA1106001394617
Complainant is Best Little Sites, LLC (“Complainant”), represented by Richard J. Armstrong of Wood Jenkins LLC, Utah, USA. Respondent is Adobo Games / Argene Tanyong (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <comicbookmovie.net>, registered with eNom.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2011; the National Arbitration Forum received payment on June 21, 2011.
On June 24, 2011, eNom confirmed by e-mail to the National Arbitration Forum that the <comicbookmovie.net> domain name is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom 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 July 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 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@comicbookmovie.net. Also on July 1, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <comicbookmovie.net> domain name is confusingly similar to Complainant’s COMICBOOKMOVIE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <comicbookmovie.net> domain name.
3. Respondent registered and used the <comicbookmovie.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Best Little Sites, LLC, has not submitted material describing the business it operates, however from screenshots of its website it appears that Complainant operates a blog-type website featuring information regarding upcoming motion pictures based on comic book characters. Complainant has no trademark registrations for the COMICBOOKMOVIE.COM mark. Complainant does allege common law trademark rights in the mark, however, dating back to it first use of the domain name on January 9, 2003.
Respondent, Adobo Games / Argene Tanyong, registered the <comicbookmovie.net> domain name on January 8, 2011. Respondent’s domain name resolves to a website which looks similar to Complainant’s website.
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 has no trademark registrations for the COMICBOOKMOVIE.COM mark, instead alleging common law trademark rights in the mark dating back to its first use of the domain name on January 9, 2003. Previous panels have held that registration of a mark through a trademark agency is not necessarily required in order for Complainant to establish rights in 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). Complainant may claim common law rights in a mark, provided it can affirmatively demonstrate that the mark has acquired sufficient secondary meaning to serve as a source identifier for the purposes of Policy ¶ 4(a)(i). 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 the instant case, however, Complainant has provided no evidence of secondary meaning beyond the assertion that the mark has been in actual and continuous commercial use since January 9, 2003. This is insufficient to demonstrate that the mark has attained the requisite secondary meaning under Policy ¶ 4(a)(i). The Panel finds that Complainant has failed to demonstrate common law rights in the COMICBOOKMOVIE.COM mark. See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence, statements or proof (e.g., business sales figures, revenues, advertising expenditures, number of consumers served, trademark applications or intent-to-use applications).
The Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i).
The Panel, having found that Complainant has not established rights in its COMICBOOKMOVIE.COM mark under Policy ¶ 4(a)(i), finds it unnecessary to consider Policy ¶ 4(a)(ii) and 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 elements unnecessary).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <comicbookmovie.net> domain name REMAIN WITH Respondent.
Sandra J. Franklin, Panelist
Dated: August 5, 2011
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