Glenn R. Stephanos v. Barak Hosting, Inc. / Hold for Client Sale
Claim Number: FA1109001407906
Complainant is Glenn R. Stephanos (“Complainant”), represented by Frank J. Daniele, Florida, USA. Respondent is Barak Hosting, Inc. / Hold for Client Sale (“Respondent”), represented by Michael L. Leetzow, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nationwidesynergy.com>, <palmbeachpreventive.com>, <palmbeachpreventivemedicine.com>, and <palmbeachpharmaceuticals.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2011; the National Arbitration Forum received payment on September 19, 2011.
On September 19, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <nationwidesynergy.com>, <palmbeachpreventive.com>, <palmbeachpreventivemedicine.com>, and <palmbeachpharmaceuticals.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 September 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@nationwidesynergy.com, postmaster@palmbeachpreventive.com, postmaster@palmbeachpreventivemedicine.com, and postmaster@palmbeachpharmaceuticals.com. Also on September 21, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 7, 2011.
On October 13, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
a. The domain names are the exact spelling of trademarked and incorporated company names.
b. Respondent is using one of the domain names to discredit the Complainant; the other domain names have been purchased to prevent the Complainant from acquiring the domain names.
c. Respondent has offered to sell the domain names.
B. Respondent
a. The Complainant lacks trademark or common law rights in the marks.
b. Respondent is using the <nationwidesynergy.com> resolving website to criticize the Complainant, a permissible use of the domain name.
c. Respondent acknowledges that it has no present intention of using the remaining domain names.
d. Respondent denies that the domain names were registered in bad faith.
Complainant has failed to demonstrate rights in the NATIONWIDE SYNERGY, PALM BEACH PREVENTIVE, PALM BEACH PREVENTIVE MEDICINE, and PALM BEACH PHARMACEUTICALS marks.
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.
Respondent contends that Complainant has failed to demonstrate either trademark or common law rights in the NATIONWIDE SYNERGY, PALM BEACH PREVENTIVE, PALM BEACH PREVENTIVE MEDICINE, and PALM BEACH PHARMACEUTICALS marks. The record fails to set forth the goods or services offered by Complainant under his alleged marks. Although Complainant asserts he began conducting business in March 2007, the record contains no evidence of this fact. Moreover, Complainant has not provided any information about advertising, amount of sales, marketing expenditures, media articles, or any other indications of use of the marks.
Although Complainant presents trademark application numbers for trademark applications with the United States Patent and Trademark Office (“USPTO”) for its NATIONWIDE SYNERGY (App. No. 85,404,032), PALM BEACH PREVENTIVE (App. No. 85,404,026), PALM BEACH PREVENTIVE MEDICINE (App. No. 85,404,036), and PALM BEACH PHARMACEUTICALS marks (App. No. 85,419,962), Complainant does not provide any application dates and does not include any proof of these applications with the USPTO.
Based on the lack of such evidence, the Panel concludes that Complainant has not established trademark rights or common law rights in the NATIONWIDE SYNERGY, PALM BEACH PREVENTIVE, PALM BEACH PREVENTIVE MEDICINE, and PALM BEACH PHARMACEUTICALS marks under 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 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).
Because the Complainant has not satisfied Policy ¶ 4(a)(i) as he has failed to establish rights in the marks, the Panel chooses not to analyze the other two elements of the Policy. 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); see also 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 <nationwidesynergy.com>, <palmbeachpreventive.com>, <palmbeachpreventivemedicine.com>, and <palmbeachpharmaceuticals.com> domain names REMAIN WITH Respondent.
Bruce E. Meyerson, Panelist
Dated: October 18, 2011
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