Razorbox, Inc. v.
Torben Skjodt
Claim Number:
FA0303000150795
PARTIES
Complainant is Razorbox, Inc., Lacey, WA, USA (“Complainant”) of Razorbox,
Inc. Respondent is Torben Skjodt, Paris, FRANCE (“Respondent”).
The domain name at issue is <razorbox.com>
registered with Network Solutions, Inc.
PANEL
The undersigned certifies that she has acted
independently and impartially and to the best of her knowledge has no known
conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum (the "Forum") electronically on March 20, 2003; the
Forum received a hard copy of the Complaint on March 21, 2003.
On March 24, 2003, Network Solutions, Inc. confirmed
by e-mail to the Forum that the domain name <razorbox.com> is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network Solutions, Inc. has verified that Respondent is
bound by the Network Solutions, Inc. 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 March 31, 2003, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of April 21, 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@razorbox.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 May 1, 2003, pursuant to Complainant's request to
have the dispute decided by a single-member Panel, the Forum appointed Sandra
Franklin 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.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES'
CONTENTIONS
A. Complainant
makes the following assertions:
1. Respondent’s <razorbox.com>
domain name is identical to Complainant’s RAZORBOX mark.
2. Respondent does
not have any rights or legitimate interests in the <razorbox.com>
domain name.
3. Respondent
registered and used the <razorbox.com> domain name in bad faith.
B. Respondent
failed to submit a Response in this proceeding.
FINDINGS
Complainant has a pending trademark application with the United States
Patent and Trademark Office, which was filed on January 31, 2003. The application
indicates a first use of September 13, 2001 and a first use in commerce of
January 15, 2002. Complainant asserts that it has been in business for two
years. Complainant operates a website at <razorbox.net>, which provides
website construction services.
Respondent registered the <razorbox.com> domain name on
December 10, 1999. The disputed domain name does not resolve to an active
website.
DISCUSSION
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
draw such inferences it 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.
Respondent has not replied to the allegations in the Complaint. Thus, the
Panel is permitted to presume that all reasonable allegations and inferences in
the Complaint are 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 Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence).
However, even if the Panel accepts all of Complainant’s assertions,
Complainant has not satisfied its initial burden of proof and, therefore, has
failed to establish the prima facie
case required under the Policy. With regard to Policy ¶ 4(a)(i), Complainant
must first show that the disputed domain name is either identical or
confusingly similar to a trademark or service mark in which Complainant has
rights. Complainant has not established the requisite trademark or common law
rights to grant Complainant the necessary “standing” for the Panel to find in
its favor. First, Complainant’s pending trademark application does not in and
of itself demonstrate trademark rights in the mark applied for. See Amsec Ent. v. McCall, D2001-0083
(WIPO Apr. 3, 2001) (finding that Complainant’s pending trademark applications
do not establish any enforceable rights to the mark until a trademark
registration is issued); see also Johnny
Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427, 435 (7th
Cir. 1999) (finding that the filing of trademark application alone did not give
priority over previous common law users).
Second, even if a pending trademark application was sufficient to establish
Complainant’s rights in the RAZORBOX mark, Respondent’s registration of the <razorbox.com>
domain name predates Complainant’s alleged rights. Complainant admits in its
Complaint that it has been in business for two years and Complainant’s
trademark application indicates a first use in commerce of January 15, 2002.
However, Respondent registered the disputed domain name on December 10, 1999,
more than two years prior to Complainant’s stated first use in commerce. Under
these facts, the Panel must find in favor of Respondent because it would be
impossible for Complainant to prove Respondent’s bad faith registration
subsequent to Complainant establishing any rights in the RAZORBOX mark. See Ode v. Intership Ltd., D2001-0074
(WIPO May 1, 2001) (stating that “We are of the unanimous view that the
trademark must predate the domain name”).
Thus, the Panel finds that Complainant has failed to satisfy its burden of
proof with regard to Policy ¶ 4(a)(i). Because Complainant is required to
satisfy each of the three elements listed under Policy ¶ 4(a), the Panel need
not pursue the analysis of Policy ¶¶ 4(a)(ii) or (iii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb.
Forum Sept. 20, 2002) (finding that because Complainant must prove all three
elements under the Policy, Complainant’s failure to prove one of the elements
makes further inquiry into the remaining element unnecessary); see also Lush LTD v. Lush Environs, FA
96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when Respondent does
file a Response, Complainant must allege facts, which if true, would establish
that Respondent does not have any rights or legitimate interests in the
disputed domain name).
DECISION
Having failed to establish all three elements required under ICANN Policy,
the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <razorbox.com> domain name
REMAIN with Respondent.
Sandra Franklin,
Panelist
Dated: May 9,
2003
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