3B Software Inc. v. optimizelabs.com / joshua grasmick / PrivacyProtect.org / Domain Admin
Claim Number: FA1106001394783
Complainant is 3B Software Inc. (“Complainant”), represented by Benjamin Brooks, Texas, USA. Respondent is optimizelabs.com / joshua grasmick (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nosehuggiescam.com>, <nosehuggiesreview.com>, and <thenosehuggie.com>, registered with UK2 GROUP LTD.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 21, 2011; the National Arbitration Forum received payment June 21, 2011.
On June 21, 2011, UK2 GROUP LTD. confirmed by e-mail to the National Arbitration Forum that the <nosehuggiescam.com>, <nosehuggiesreview.com>, and <thenosehuggie.com> domain names are registered with UK2 GROUP LTD. and that Respondent is the current registrant of the names. UK2 GROUP LTD. verified that Respondent is bound by the UK2 GROUP LTD. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@nosehuggiescam.com, postmaster@nosehuggiesreview.com, and postmaster@thenosehuggie.com. Also on June 29, 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 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <nosehuggiescam.com>, <nosehuggiesreview.com>, and <thenosehuggie.com>, are confusingly similar to Complainant’s NOSE HUGGIE mark.
2. Respondent has no rights to or legitimate interests in the <nosehuggiescam.com>, <nosehuggiesreview.com>, and <thenosehuggie.com> domain names.
3. Respondent registered and used the <nosehuggiescam.com>, <nosehuggiesreview.com>, and <thenosehuggie.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 3B Software Inc., allegedly owns the trademark rights to the NOSE HUGGIE mark. The <nosehuggies.com> domain name was registered March 28, 2008 to host an active website selling the NOSE HUGGIE nose clip. Complainant claims to have purchased the <nosehuggies.com> domain name and trademark rights to the NOSE HUGGIE in March 2010 from the original owner.
Respondent, Joshua Grasmick, registered the <thenosehuggie.com> domain name August 8, 2010. The disputed domain names resolve to Respondent’s website, which provides negative and inflammatory information regarding Complainant’s NOSE HUGGIE products, including the implication that Complainant’s business is a scam.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Preliminary Issue: Multiple Respondents
In the instant proceeding, Complainant alleges that the entities that control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Joshua Grasmick publicly registered the <thenosehuggie.com> domain name but privately registered the <nosehuggiescam.com> and <nosehuggiereview.com> domain names under a privacy shield.
The Panel finds that Complainant has not presented sufficient evidence to demonstrate that the listed entities are jointly controlled. For that reason, Complainant may not proceed in one action as to all three disputed domain names. The Panel, under the National Arbitration Forum’s Supplemental Rule 4(f)(ii), is required to dismiss without prejudice the Complaint in relation to the <nosehuggiesscam.com> and <nosehuggiereview.com> domain names.
Complainant contends that it has established rights in the NOSE HUGGIE mark. Previous panels have found that a complainant is not required to register its mark with a trademark authority in order to establish rights. 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). The Panel agrees with this analysis.
Complainant claims that it has maintained a fair-use trademark since purchasing the <nosehuggies.com> domain name in March of 2010; but this action, standing alone is not sufficient to demonstrate Complainant’s common law rights in the NOSE HUGGIE mark. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); 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).
Therefore, the Panel finds that Complainant failed to establish rights in the NOSE HUGGIE mark pursuant to a Policy ¶ 4(a)(i) analysis; the elements of ICABB Policy ¶ 4(a)(i) have not been satisfied.
Given the Panel’s findings under Policy ¶ 4(a)(i), the Panel declines to analyze Policy ¶ 4(a)(ii). 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).
The Panel found that Complainant did not satisfy Policy ¶ 4(a)(i) and therefore, declines 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.
Accordingly, it is Ordered that this Complaint be DISMISSED without prejudice to refilling with appropriate evidence. No TRANSFER is ORDERED as to the <thenosehuggie.com> domain name, which shall REMAIN WITH Respondent.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 5, 2011
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