Two Design
Group L.P. v. Joe Tejeda d/b/a Elegant Entertainment
Claim
Number: FA0302000146221
Complainant is
Two Design Group L.P., Dallas, TX, (“Complainant”) represented
by Patrick W. Fletcher of Fletcher Law Offices. Respondent is
Joe Tejeda d/b/a Elegant Entertainment, Los Angeles, CA, (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <yourperfectwedding.com> registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 19, 2003; the Forum received a hard copy of the
Complaint on February 21, 2003.
On
February 19, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed
by e-mail to the Forum that the domain name <yourperfectwedding.com>
is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a
Internet Names Worldwide has verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
February 25, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 17, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@yourperfectwedding.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 25, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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. The domain name registered by Respondent,
<yourperfectwedding.com>, is identical to Complainant’s YOUR
PERFECT WEDDING mark.
2. Respondent has no rights or legitimate
interests in the <yourperfectwedding.com> domain name.
3. Respondent registered and used the <yourperfectwedding.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the YOUR PERFECT WEDDING mark (Reg. No.2,669,024
registered December 31, 2002) in relation to flower arranging services for
wedding receptions and ceremonies, and consultation services in the field of
decorating for wedding receptions and ceremonies. Complainant registered the
<yourperfectwedding.net> domain name, which resolves to Complainant’s
website where customers can peruse Complainant’s wedding floral and decor
services.
Respondent
registered the <yourperfectwedding.com> domain name on October 8,
2002. Respondent is using the disputed domain name to encourage offers to buy
the domain name registration.
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 will draw such inferences as
the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
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
established in this proceeding that it has rights in the YOUR PERFECT WEDDING
mark through registration with the USPTO and continuous use in commerce since
January 1, 1999. The ICANN dispute resolution policy is “broad in scope” in
that “the reference to a trademark or service mark ‘in which the complainant
has rights’ means that ownership of a registered mark is not
required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the Policy. McCarthy
on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000). 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. Rights
in the mark can be established by pending trademark applications); see also
British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)
(noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”).
The domain name
registered by Respondent, <yourperfectwedding.com>, is identical
to Complainant’s registered mark because the disputed domain name incorporates
Complainant’s entire mark and omits the spaces between the words and adds the
generic top-level domain (gTLD) “.com” to the end of the mark. The omission of
spaces does not significantly differentiate the domain name from the mark
because spaces are not permissible in domain names. The addition of the gTLD
similarly fails to distinguish the domain name from the mark because gTLDs are
a requirement for domain names on the Internet. See Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430
(S.D.N.Y. 1997) aff’d 152 F3d 920 (2nd Cir. 1998) cert. denied
525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and
defendant’s <plannedparenthood.com> domain name nearly identical); see
also Technology Prop., Inc. v. Burris,
FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name
<radioshack.net> is identical to Complainant’s mark, RADIO SHACK).
The Panel has
determined that Policy ¶ 4(a)(i) has been demonstrated.
Respondent has
not submitted a Response in this proceeding. Therefore, the Panel may accept
all reasonable inferences and allegations in the Complaint as true. See Do
the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of
a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard”); see
also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of Complainant to
be deemed true).
Moreover,
Respondent has not provided the Panel with any circumstances and there is no
evidence in the record to establish that Respondent has any rights or
legitimate interests in the <yourperfectwedding.com> domain name. See Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names).
Respondent is
using the disputed domain name to encourage offers to buy the registration of
the <yourperfectwedding.com> domain name. The Panel may infer that
Respondent has no rights or legitimate interests in the domain name pursuant to
Policy ¶ 4(a)(ii) because Respondent’s only use of the domain name has been to
attempt to sell its registration. See
J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum
Sept. 7, 2000) (finding rights or legitimate interests do not exist when one
has made no use of the websites that are located at the domain names at issue, other
than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding Respondent’s conduct purporting to sell the domain name suggests it
has no legitimate use).
Respondent has
not come forward with any evidence and there is nothing in the record to
suggest that Respondent is commonly known by YOUR PERFECT WEDDING or <yourperfectwedding.com>.
Therefore, Respondent has failed to establish its rights or legitimate
interests in the disputed domain pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail").
The Panel has
determined that Policy ¶ 4(a)(ii) has been demonstrated.
Respondent is
using the <yourperfectwedding.com> domain name to encourage
potential buyers of the domain name registration to make an offer to
Respondent. Respondent, through its agent Alan Tejeda, directly offered to sell
the domain name registration to Complainant. These circumstances indicate that
Respondent registered the disputed domain name primarily for the purpose of
selling the domain name registration to Complainant, or to a competitor of
Complainant, for valuable consideration in excess of Respondent’s out-of-pocket
costs, which is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(i). See Little Six, Inc v.
Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding
Respondent's offer to sell the domain name at issue to Complainant was evidence
of bad faith); see also Universal
City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000)
(finding bad faith where the Respondent made no use of the domain names except to
offer them to sale to the Complainant).
The Panel has
determined that Policy ¶ 4(a)(iii) has been demonstrated.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <yourperfectwedding.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 3, 2003
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