Nicholas Perez v. Alton Flanders
Claim Number: FA1203001434530
Complainant is Nicholas Perez (“Complainant”), represented by Merton Thompson of Burns & Levinson LLP, Massachusetts, USA. Respondent is Alton Flanders (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <condomworld.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 March 14, 2012; the National Arbitration Forum received payment on March 14, 2012.
On March 15, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <condomworld.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 March 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 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@condomworld.com. Also on March 15, 2012, 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.
Because of extraordinary circumstances, the Panel extended the time in which Respondent could submit a response until April 27, 2012. Respondent did submit a response by that date.
On April 16, 2012, 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.
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
Complainant alleges the following:
1. Complainant owns rights in its CONDOM WORLD mark and submits evidence that the mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,777,153 registered October 28, 2003).
2. Complainant uses the CONDOM WORLD mark in its business, which operates retail stores that sell condoms and other adult-oriented products in Puerto Rico.
3. Complainant owns common law rights in the CONDOM WORLD mark.
4. Complainant offered to purchase the domain name from Respondent for a price higher than the registration fee and was rejected.
5. Respondent registered the <condomworld.com> domain name on October 18, 1996.
6. Respondent has no connection to Complainant and does not have consent to use the CONDOM WORLD mark in any manner.
7. Respondent uses the domain name to generate “pay-per-click” revenue.
8. Respondent demonstrates a pattern of registering and using domain names in bad faith.
9. Respondent had actual and constructive notice in Complainant’s rights in the CONDOM WORLD mark at the time it registered the domain name.
B. Respondent
Respondent alleges the following:
1. Complainant has lapsed federal registration and a pending registration application.
2. The pending registration “is currently under refusal” for failing to describe the graphical features of the mark with sufficient specificity.
3. Neither the lapsed registration nor the pending trademark registration predate the registration of the domain name.
4. Complainant has provided no evidence of common-law rights predating the registration of the domain name.
5. Respondent has been using the two common words, “condom” and “world” to advertise the sale of condoms and related merchandise since 1996.
6. The Complainant has not set forth evidence that Respondent had any knowledge of Complainant when Respondent registered the domain name in 1996.
7. The Complainant has not offered any explanation why he waited 16 years in which to bring this Complaint.
There can be no bad faith registration of the domain name because no evidence has been presented that Complainant had rights in a trademark or common law mark at the time the domain name was registered. Furthermore, no evidence was presented that Respondent could have had, or did have, knowledge of Complainant’s business at the time the domain name was registered.
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 registered the domain name in 1996. Complainant has not presented evidence that he held either trademark rights or common law rights in the CONDOM WORLD mark as of the date the domain name was registered. Moreover, there is no evidence that Respondent had any knowledge of Complainant in 1996 when Respondent registered the domain name. Under these circumstances, there can be no bad faith registration of the domain name.
Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date. . .when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii), 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)).
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 <condomworld.com> domain name REMAIN WITH Respondent.
Bruce E. Meyerson, Panelist
Dated: May 10, 2012
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