Trustees of the
Claim Number: FA0804001181315
Complainant is Trustees of the Academy of Richmond County a/k/a Westobou
Festival, LLC (“Complainant”),
represented by Robert A. Mullins, Georgia,
USA. Respondent is D. Shane Thompson
(“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <westoboufestival.org>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May
6, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 27, 2008
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@westoboufestival.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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." 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 makes the following assertions:
1. Respondent’s <westoboufestival.org> domain name is identical to Complainant’s WESTOBOU FESTIVAL mark.
2. Respondent does not have any rights or legitimate interests in the <westoboufestival.org> domain name.
3. Respondent registered and used the <westoboufestival.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Trustees of the Academy of Richmond County a/k/a Westobou Festival, LLC, has filed a trademark
application for the WESTOBOU FESTIVAL mark (Ser. No. 77/256,774, filed
Respondent registered the <westoboufestival.org>
domain name on
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. 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.”).
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 asserts rights in the WESTOBOU FESTIVAL mark through application of the mark with the USPTO. However, the Panel finds that application of the mark alone is insufficient to confer rights upon Complainant under Policy ¶ 4(a)(i). See Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s pending trademark applications did not establish rights because “an application for [a] mark is not per se sufficient to establish rights [in] a trademark for the purposes of the [Policy]”); see also Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (“Complainant’s pending applications do not establish any enforceable rights until registration issues.”).
Complainant need not demonstrate trademark registration,
however, in order to achieve standing under Policy ¶ 4(a)(i). Having failed to demonstrate registration,
Complainant can demonstrate evidence of common law rights in the mark in order
to continue with this proceeding. See
Complainant’s submission fails to assert any common law
rights in the WESTOBOU FESTIVAL mark, and has not offered any evidence that
would even imply such rights. Moreover,
Respondent’s registration of the disputed domain name predates Complainant’s application
for trademark status. Without alleging
any evidence of a first use in commerce by Complainant that would refute the
predating disputed domain name registration, the Panel is left unable to find
that Complainant has any rights in the mark pursuant to Policy ¶ 4(a)(i) for
the purposes of the instant UDRP proceeding.
See Intermark Media, Inc. v. Wang Logic Corp.,
FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable
interest that the complainant may have in its common law mark did not predate
the respondent’s domain name registration, therefore finding that Policy ¶
4(a)(i) had not been satisfied); see also
Cyberimprints.com, Inc. v. Alberga,
FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that the complainant failed
to prove trademark rights at common law because it did not prove the
CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods
or services or that there was strong customer identification of the mark as indicating
the source of such goods or services).
The Panel finds that Policy ¶ 4(a)(i) has not been satisfied.
The Panel has found that Complainant lacks rights in the WESTOBOU FESTIVAL mark pursuant to Policy ¶ 4(a)(i). The Panel can and does choose to decline further analysis under Policy ¶¶ 4(a)(ii) and (iii) based on the finding in Policy ¶ 4(a)(i). 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 VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).
Based on the foregoing reasons, the Panel will not consider
Policy ¶ 4(a)(ii).
For the same reasons as enumerated in Policy ¶ 4(a)(ii), the Panel the Panel will not consider Policy ¶
4(a)(iii).
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 <westoboufestival.org> domain name REMAIN with Respondent.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 20, 2008
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