Comadre Commerce, LLC v. W. D. Group Ltd.
Claim Number: FA1203001433178
Complainant is Comadre Commerce, LLC (“Complainant”), represented by Kevin S. Wiley Jr. of Gant & Hicks, PLLC, Texas, USA. Respondent is W. D. Group Ltd. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <comadre.com>, registered with Tucows.com Co.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2012; the National Arbitration Forum received payment on March 6, 2012.
On March 7, 2012, Tucows.com Co. confirmed by e-mail to the National Arbitration Forum that the <comadre.com> domain name is registered with Tucows.com Co. and that Respondent is the current registrant of the name. Tucows.com Co. has verified that Respondent is bound by the Tucows.com Co. 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 March 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 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@comadre.com. Also on March 14, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 cancelled from Respondent to Complainant.
A. Complainant
1. Complainant, Comadre Commerce LLC, has a trademark registration with the United States Patent and Trademark Office ("USPTO") for “the usage of and [sic] image of the term ‘Comadre’” (Ser. No. 85378239).
2. Respondent has been squatting on the <comadre.com> domain name without any utilization of the term.
3. Respondent has received several reasonable offers to purchase the domain name from Complainant but has denied or ignored these efforts.
4. Respondent’s unauthorized use of Complainant’s image on Respondent’s various websites constitutes copyright and trademark infringement in violation of Title 17 U.S.C. Section 106(a) of the Copyright Act of 1976.
5. Respondent has registered the domain names in bad faith by preventing Complainant from “utilizing his own image.”
6. Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business and ability to utilize this image.
B. Respondent
Respondent, W.D. Group Ltd., failed to submit a Response in this proceeding.
Complainant claims a trademark registration with the United States Patent and Trademark Office ("USPTO") for “the usage of and [sic] image of the term ‘Comadre’” (Ser. No. 85378239). However, Complainant has failed to show evidence of first use of the mark, trademark registration or Complainant’s business.
Respondent’s domain name was registered on June 12, 2003.
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.
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.”).
Complainant asserts that it has rights in the COMADRE mark through a trademark registration with the USPTO. However, Complainant has not provided evidence or arguments related to its use of the mark in commerce. Complainant has failed to submit a trademark registration as evidence of its trademark. Instead, Complainant has presented a printout from the USPTO concerning a Trademark Office Action Response. This printout shows Complainant’s purported mark but does not provide any dates of first use or confirm that a trademark registration exists. The Panel finds that Complainant has failed to show rights in the COMADRE mark; therefore, Complainant has not satisfied Policy ¶ 4(a)(i).
Because the Panel has found that Complaint has failed to satisfy the first and third Policy elements, it is unnecessary to address the second Policy element. the Panel may decline 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).
Respondent’s domain name was registered on June 12, 2003. Complainant has failed to show that it has used its mark prior to this date or even when Complainant began using its mark. Accordingly, as Complainant has not shown use of the mark prior to registration of Respondent’s domain name, the Panel finds that Respondent could not have registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <comadre.com> domain name REMAIN WITH Respondent.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 28, 2012
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