Martin Stevens d/b/a Forum Publishing v. forumpublishing.com / NULL NULL
Claim Number: FA1112001418982
Complainant is Martin Stevens d/b/a Forum Publishing (“Complainant”), represented by Tawnya R. Wojciechowski of TRW Law Group, California, USA. Respondent is forumpublishing.com / NULL NULL (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <forumpublishing.com>, registered with eNom, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2011; the National Arbitration Forum received payment on December 7, 2011.
On December 8, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <forumpublishing.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. 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 December 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 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@forumpublishing.com. Also on December 12, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <forumpublishing.com> domain name is identical to Complainant’s FORUM PUBLISHING mark.
2. Respondent does not have any rights or legitimate interests in the <forumpublishing.com> domain name.
3. Respondent registered and used the <forumpublishing.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Martin Stevens d/b/a Forum Publishing, is the owner of the FORUM PUBLISHING mark. Complainant uses the mark in connection with the publishing of various retailer and wholesale books and directories.
Respondent, forumpublishing.com / NULL NULL, registered the disputed domain name on May 24, 2000. The <forumpublishing.com> domain name resolves to a website which is claimed to be under construction but states that it will eventually offer copyrights and other CD based software publications. Additionally, the disputed domain name allegedly causes downloading of malicious software.
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 argues that it has rights in the FORUM PUBLISHING mark. While trademark registration is frequently relied upon to demonstrate rights in a mark, the registration of a trademark is unnecessary to establish rights under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); 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 will review the record to determine whether Complainant has common law rights in its mark.
Complainant contends that the FORUM PUBLISHING mark has acquired secondary meaning thus giving Complainant common law rights in the mark. Complainant claims that its company, FORUM PUBLISHING, was founded in 1981. Complainant provides evidence of its filing of its fictitious business name in New York in 1985. Complainant argues that it has widely and extensively advertised its work in the publishing field using the FORUM PUBLISHING mark on the Internet. Complainant claims that its Internet presence began in 1996 and that the advertisement done has developed a valuable reputation for the FORUM PUBLISHING mark which the public recognizes exclusively with Complainant’s work. Complainant asserts that it does business with wholesale merchandise suppliers and manufacturers worldwide. Panels have found that the continuous and ongoing use of a mark is evidence of common law rights. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).Therefore, the Panel finds that the FORUM PUBLISHING mark has acquired secondary meaning and that Complainant has common law rights in the FORUM PUBLISHING mark pursuant to Policy ¶ 4(a)(i).
Complainant also contends that the <forumpublishing.com> domain name is identical to its mark. The Panel finds that Respondent’s deletion of the space between words as well as the addition of the generic top-level domain (“gTLD”) “.com” failed to distinguish the disputed domain name from Complainant’s mark in any way. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). As a result, the Panel finds that the <forumpublishing.com> domain name is identical to Complainant’s FORUM PUBLISHING mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. In order for Complainant to prevail, it must make a prima facie case which shifts the burden to Respondent.. The Panel finds, however, that Complainant failed to make a prima facie case and, therefore, that Complainant has not satisfied Policy ¶ 4(a)(ii), as discussed below. See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii)); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).
Complainant asserts that the disputed domain name resolves to a website which is under construction but states that it will eventually offer copyrights and other CD based software publications. Additionally, the disputed domain name allegedly causes downloading of malicious software. However, Complainant fails to submit any evidence which corroborates this claim. As such, the Panel finds that Complainant failed to prove that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See O.C. Seacrets, Inc. v. S. TradeWINs, Inc., FA 328042 (Nat. Arb. Forum Oct. 29, 2004) (“Complainant has provided no evidence as to the use of the <jamaicausa.com> domain name and has merely asserted that Respondent has no rights or legitimate interests, which is not sufficient to support a finding that Respondent lacks rights or legitimate interests.”); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) was not met.
Complainant failed to meet the required showing under Policy ¶ 4(a)(ii). In order for a complainant to prevail, the complainant must satisfy all 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 Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (deciding not to inquire into the remaining elements of the Policy where the complainant could not satisfy Policy ¶ 4(a)(i)). Therefore, the Panel chooses not to make a bad faith determination under Policy ¶ 4(a)(iii) as it is 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 <forumpublishing.com> domain name REMAIN WITH Respondent.
John J. Upchurch, Panelist
Dated: January 25, 2012
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