National Safe Haven Alliance v. Bob Floyd / Floyd - Partners
Claim Number: FA1208001458705
Complainant is National Safe Haven Alliance (“Complainant”), represented by Maureen Beacom Gorman of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Bob Floyd / Floyd - Partners (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nationalsafehavenalliance.org>, <babysafehaven.org>, <babysafehaven.tv>, <nationalsafehavenalliance.com>, <nationalsafehaven.org> and <nationalsafehaven.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2012; the National Arbitration Forum received payment on August 17, 2012.
On August 20, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <nationalsafehavenalliance.org>, <babysafehaven.org>, <babysafehaven.tv>, <nationalsafehavenalliance.com>, <nationalsafehaven.org> and <nationalsafehaven.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. 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 August 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@nationalsafehavenalliance.org, postmaster@babysafehaven.org, postmaster@babysafehaven.tv, postmaster@nationalsafehavenalliance.com, postmaster@nationalsafehaven.org, and postmaster@nationalsafehaven.com. Also on August 21, 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.
A timely Response was received and determined to be complete on September 10, 2012.
An Additional Submission was received from Complainant and determined to be complete on September 17, 2012.
An Additional Submission was received from Respondent and determined to be complete on September 24, 2012.
On September 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant’s Allegations
B. Respondent’s Allegations
1. Respondent is a full-service advertising agency that was founded in 1995. Respondent works with non-profit and for-profit clients.
2. In July of 2000, Respondent began a campaign to raise awareness and encourage passage of “Baby Safe Haven laws” throughout the United States, seeking celebrities who would be willing to partner with the Indiana Family and Social Services Administration and create a public service announcement.
3. By fall of 2002, Respondent had produced a public service announcement for nationwide distribution and began using “Safe Haven” as its term of trade.
4. Respondent, Bob Floyd, is a founding board member of Complainant and played a key role in both the formation of the organization and its communications strategies.
5. In 2009, Respondent modified its company policy on pro bono work to require payment from Complainant for any services specifically initiated by Complainant.
6. In October of 2009, Respondent presented an invoice to Complainant that covered a single year of hosting, DNS renewals, and labor. Complainant paid this invoice without requesting a transfer of IP rights, DNS ownership, or to establish licensing agreements.
7. Respondent, while explaining to Complainant that Respondent is the rightful owner of the disputed domain names, was willing to transfer ownership of the domain names if Complainant would pay for services from 2010–2012 that Respondent had rendered.
8. Respondent has maintained long-standing use of the base name “Safe Haven” and intellectual property which predates the existence of Complainant’s organization by several years.
9. Complainant is improperly claiming rights to a common phrase related to the Safe Haven law.
10. Respondent has rights in the “Safe Haven” term and the corresponding domain names that it has established over a decade-long period.
11. Respondent conceptualized the domain names and registered the domain names without the need for authorization from Complainant. Further, Complainant did not pay Respondent for the domain name registrations, but for the costs of hosting and renewal.
12. Respondent registered the disputed domain names prior to any instruction from Complainant for its own pro bono use, not on behalf of any organization.
13. Respondent has not disrupted the web pages or Complainant’s services at any time.
14. Respondent never registered the disputed domain names on behalf of anyone, including Complainant.
C. Additional Submissions
The Additional Submissions of the parties do not address issues pertinent to this Decision.
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.
Complainant does not allege or provide evidence of any trademark registrations that it owns with a national trademark authority. However, Complainant appears to assert common law rights to the terms NATIONAL SAFE ALLIANCE and BABY SAFE HAVEN. While Complainant has demonstrated that a company by the name of Safe Haven Alliance was incorporated in the state of Virginia, the Policy does not apply to trade names. See Johnson County Siding & Window Co., Inc. v. Diamond Contracting, Inc. FA1443590 (June 25, 2012) (“The use of a trade name by complainant is insufficient to establish rights under ¶ 4 (a)(i) of the Policy”.) Neither has Complainant shown its use of the NATIONAL SAFE HAVEN term as a trademark, and certainly has not shown documentary evidence of the continuous and extensive use of a trademark required to establish secondary meaning so as to create common law rights. See Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence, statements or proof).
Complainant has shown in its papers that Baby Safe Haven is a term for infant abandonment laws. However, Complainant has not shown evidence of its use of this term as a trademark, and certainly has not shown documentary evidence of the continuous and extensive use required to establish secondary meaning in that term so as to create common law rights.
Thus, Complainant has not satisfied Policy ¶ 4(a)(i).
Because this Panel has determined that Complainant has not satisfied Policy ¶ 4(a)(i), there is no need for the Panel to decide whether Respondent has rights or legitimate interests in the domain name or whether Respondent registered or used the domain names in bad faith.
The Panel will not address the controversy as to whether a contract existed requiring Respondent to register the domain names in Complainant’s name, since contract disputes are outside the scope of the Policy. See Occidental Hoteles Mgmt. S.C. v. Media Insights, FA 1400029 (Oct. 6, 2011) (“For the Panel to decide the fate of the two domain names, it would have to delve into the contractual relationship between the parties, which it declines to do …”).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered, without prejudice, that the <nationalsafehavenalliance.org>, <babysafehaven.org>, <babysafehaven.tv>, <nationalsafehavenalliance.com>, <nationalsafehaven.org> and <nationalsafehaven.com> domain names REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: October 1, 2012
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