Vacation Reservation Center, LLC v. Capital Marketing Rock Hill / Kathleen Childress
Claim Number: FA1112001421105
Complainant is Vacation Reservation Center, LLC (“Complainant”), represented by Kenneth V. Farino, Virginia, USA. Respondent is Capital Marketing Rock Hill / Kathleen Childress (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vacationinwilliamsburg.com>, registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2011; the National Arbitration Forum received payment on December 21, 2011.
On December 21, 2011, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <vacationinwilliamsburg.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 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@vacationinwilliamsburg.com. Also on January 4, 2012, 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.
A timely Response was received and determined to be complete on January 25, 2012.
On January 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
According to the Complainant, the disputed domain name was originally used by a company called NALJR, Inc. This company was a contractor for the Complainant and secured and used the name on behalf of the Complainant. By an agreement made in 2008, all rights to the web site at the disputed domain name, and the domain name, were purchased by the Complainant.
The Complainant states that the owner of NALJR died and his sister tried to continue the business. Since NALJR had not formally transferred the rights to the disputed domain name to the Complainant, the owner’s sister, without the permission of the Complainant, transferred the disputed domain name to her own company.
The Complainant alleges that the Respondent has no right to use the disputed domain name and does not use it in her business.
According to the Complainant, the domain name is registered in bad faith to the Respondent because of the cited agreement of sale. The Respondent did not have a legal right to register it in any name other than the Complainant.
B. Respondent
The Response consists of a copy of the Complaint with annotations containing statements by the Respondent. Such a document does not satisfy the requirements of ¶ 5 of the Rules and therefore the Respondent’s statements will not be summarized here.
Under other circumstances, the Panel could ask for an amended Response pursuant to ¶ 10 and 12 of the Rules, however, for the reasons give below, the Panel holds that it is not necessary to ask for an amended Response.
For the reasons stated below, the Panel does not make any findings of fact.
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.
The first element of the Policy (¶ 4(a)(i)) requires that the Complainant assert that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Nowhere in the Complainant does the Complainant allege, much less provide evidence to prove, that it has rights in a trademark or service mark which is identical or confusingly similar to the disputed domain name.
The disputed domain name consists of the descriptive term “vacation in Williamsburg”, which is a well-known location in the United States.
It is settled case law under the Policy that, in order successfully to assert common law or unregistered trademark rights
the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions ¶ 1.7 (2d ed.), available at http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#17.
Since the Complainant has not provided any arguments or evidence to the effect that it has rights in a mark similar to the disputed domain name, the Panel holds that the Complainant has failed to comply with its burden of proving this element of the Policy in accordance with Policy ¶ 4(a) (“In the administrative proceeding, the complainant must prove that each of these three elements are present.”).
Since the Panel has concluded that the Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines 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)).
For the reasons given above, the Panel need not consider this element of the Policy.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <vacationinwilliamsburg.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: January 29, 2011
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