The Key to Polo Enterprises Corp. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1112001420371
Complainant is The Key to Polo Enterprises Corp. (“Complainant”), represented by S. Roxanne Edwards of Baker & McKenzie LLP, Texas, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <anamariapolo.com>, registered with RegisterMatrix.com Corp.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2011; the National Arbitration Forum received payment on December 16, 2011.
On December 26, 2011, RegisterMatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <anamariapolo.com> domain name is registered with RegisterMatrix.com Corp. and that Respondent is the current registrant of the name. RegisterMatrix.com Corp. has verified that Respondent is bound by the RegisterMatrix.com Corp. 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 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 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@anamariapolo.com. Also on December 28, 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 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <anamariapolo.com> domain name is identical to Complainant’s ANA MARIA POLO mark.
2. Respondent does not have any rights or legitimate interests in the <anamariapolo.com> domain name.
3. Respondent registered and used the <anamariapolo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Key to Polo Enterprises Corp., is a Florida-based television production company that produces the show “Caso Cerrado.” The ANA MARIA POLO mark, in which Complainant asserts rights, is the proper name of one the President of the Company and a prominent cast member of one of Complainant’s shows.
Respondent, PrivacyProtect.org / Domain Admin, registered the disputed domain name on May 8, 2002.
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.
Under Policy ¶ 4(a)(i), Complainant is required to established rights in the ANA MARIA POLO mark to be successful on its claim. Although the most common way of doing that is by registering the mark with a governmental trademark authority, a registration is not necessary to establish rights in a mark if Complainant can show that it has 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). Therefore, if Complainant can show that it has developed a secondary meaning in the ANA MARIA POLO mark such that the mark is now clearly associated with its business through continuous use or public awareness, the Panel may find that Complainant has established rights in the mark under Policy ¶ 4(a)(i). See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) ("setting aside the contrary statements about the date of Complainant's first actual use, the mere claim of use is not enough to establish rights. Use must be in a manner sufficiently public to create some public awareness."); see also 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).
Complainant claims that it has established rights in the ANA MARIA POLO mark through the creation of fame and notoriety in the mark as associated with its business. Complainant states that the mark is the proper name of its President, Ana Maria Polo. Complainant argues that Ms. Polo has achieved fame and notoriety through her name, and as a result the mark, because of her status within the company and her appearances on a popular television program that the company produces. Complainant also argues that it has filed a federal trademark registration with the United States Patent and Trademark Office (“USPTO”). Complainant submits the search page from the USPTO website to verify that the registration and been filed, but what the evidence shows is that the mark is not yet registered. Complainant has failed to submit any evidence of its use of the mark or of Ms. Polo’s alleged fame. As a result, the Panel finds that Complainant has failed to establish rights in the disputed domain name under Policy ¶ 4(a)(i) because to establish rights one needs more than mere assertions of popularity, even if a trademark application has been filed. 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 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 ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Complainant’s mere application to the USPTO to register the ECG mark is insufficient to establish rights to the mark.”).
Because of the Panel’s finding on Complainant’s lack of rights in the ANA MARIA POLO mark, it declines to address the issue of confusingly similarity under Policy ¶ 4(a)(i). See Vail Corp. & Vail Trademarks, Inc. v. Resort Destination Mktg., FA 1106470 (Nat. Arb. Forum Jan. 8, 2008) (finding it unnecessary to examine all three elements of the Policy once shown the complainant could not satisfy one element).
The Panel will not address the arguments presented under Policy ¶ 4(a)(ii) because of Complainant’s failure to satisfy the elements of Policy ¶ 4(a)(i). 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))
The Panel will not address the arguments presented under Policy ¶ 4(a)(iii) because of Complainant’s failure to satisfy the elements of Policy ¶ 4(a)(i). See 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.
Accordingly, it is Ordered that the <anamariapolo.com> domain name REMAIN with Respondent.
James A. Carmody, Esq., Panelist
Dated: January 23, 2012
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