Tina Alia Hage v. ODEGARD Group LLC.
Claim Number: FA1107001400228
Complainant is Tina Alia Hage (“Complainant”), represented by J. Anthony Lovensheimer of Pepper Hamilton LLP, Pennsylvania, USA. Respondent is ODEGARD Group LLC. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tinaalia.com>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2011; the National Arbitration Forum received payment on July 25, 2011.
On July 26, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <tinaalia.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 July 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@tinaalia.com. Also on July 27, 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 August 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <tinaalia.com> domain name is identical to Complainant’s TINA ALIA mark.
2. Respondent does not have any rights or legitimate interests in the <tinaalia.com> domain name.
3. Respondent registered and used the <tinaalia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tina Alia Hage, argues that she holds common law rights in the TINA ALIA mark due to her use of the mark since at least March 2006 in connection with Complainant’s appearances at auto shows and rallies.
Respondent, ODEGARD Group LLC., currently owns the <tinaalia.com> domain name which shows a registration date of February 19, 2009. The disputed domain name resolves to an inactive website that automatically refreshes every few seconds and contains a banner stating “We’re currently under construction.”
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 claims that she has established common law rights in the TINA ALIA mark. A complainant can establish rights in a mark without producing a trademark registration as long as the complainant can prove common law 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); 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).
Here, Complainant asserts that she has common law rights in the TINA ALIA mark demonstrated by the fact that Complainant’s personal name is “Tina Alia Hage” and that Complainant has used the mark since at least March 2006 to promote her car show and rally appearances. Complainant also claims that she was the original owner of the <tinaalia.com> domain name. In Annex B, Complainant provides screen shots of her online presence and history of organizing car shows. Complainant claims that she is now sought after by the auto show industry to make appearances and handle public relations under the TINA ALIA mark and that she has contracts with sponsors in the automotive industry requiring her to make appearances at shows and maintain an online presence through various social media outlets under her TINA ALIA mark. However, the evidence provided by Complainant does not sufficiently illustrate Complainant’s notoriety and work under her personal name, aside from use as an online screen name, and is insufficient to demonstrate secondary meaning in the TINA ALIA mark. Thus, the Panel concludes that Complainant has not established common law rights in the TINA ALIA mark according to Policy ¶ 4(a)(i). See Falwell v. Cohn, D2002-0184 (WIPO June 3, 2002) (“Complainant claims a common law trademark in his personal name. The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services.”); see also Bruus-Jensen v. Adamsen, D2004-0458 (WIPO Sept. 29, 2004) (holding that the complainant had not acquired common law rights in his personal name as a reference to a particular source or organization).
The Panel finds that Policy ¶ 4(a)(i) has not been met.
Because of the reasons given in the Panel’s discussion of Policy ¶ 4(a)(i) and Complainant’s failure to satisfy that element of the Policy, 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).
Based on the Panel’s finding that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel has declined 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 WITHOUT PREJUDICE.
Accordingly, it is Ordered that the <tinaalia.com> domain name REMAIN WITH Respondent.
Bruce E. Meyerson, Panelist
Dated: August 29, 2011
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