national arbitration forum

DECISION

Rita A. Girondi v. LIGHT CHURCH, LCH

Claim Number: FA1311001529079

PARTIES

Complainant is Rita A. Girondi (“Complainant”), represented by Michael Cherewka, Pennsylvania, USA. Respondent is LIGHT CHURCH, LCH (“Respondent”), represented by Fin Lemonde, Oregon, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <klickerz.com>, registered with Enom.

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.

Carol Stoner, Esq. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2013; the National Arbitration Forum received payment on November 8, 2013.

On November 11, 2013, Enom confirmed by e-mail to the National Arbitration Forum that the <klickerz.com> domain name is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom 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 November 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 2013 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@klickerz.com. Also on November 13, 2013, 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 December 3, 2013.

On December 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., 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.

RELIEF SOUGHT

Complainant requests that the domain name <klickerz.com> be transferred from Respondent to Complainant.

Respondent requests that it retain its rights to domain name <klickerz.com> and that Complainant be charged with reverse domain name hijacking.

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts the following allegations:

Policy ¶ 4(a)(i)

Complainant uses the KLICKERZ mark in connection with identifying and promoting its Classroom Response System.
Complainant owns rights in the KLICKERZ mark because it registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,360,615 filed November 29, 2005, and registered December 25, 2007). See Complainant’s Exhibit A.
The <klickerz.com> domain name is identical to Complainant’s KLICKERZ mark.

Policy ¶ 4(a)(ii)

Respondent is not making an active use of the disputed domain name. See Complainant’s Exhibit B.

Policy ¶ 4(a)(iii)

Respondent is not making an active use of the disputed domain name. See Complainant’s Exhibit B.

b. Respondent registered the disputed domain name <klickerz.com> on May 25, 2003.

B. Respondent

Respondent asserts the following allegations:

Policy ¶ 4(a)(i)

Respondent does not dispute that the Complainant has a valid US TM for the term “klickerz” for commercial uses as stated, and that the term klickerz is virtually identical to the 2^nd level in the domain name <klickerz.com>.

Policy ¶ 4(a)(ii)

Complainant has failed to meet its burden of proof under Policy ¶ 4(a)(ii), in that Complainant makes no statements, and offers no evidence, regarding Respondent’s lack of rights in the disputed name.
Respondent has acquired rights in the use of the mark, as it has operated under the domain name <klickerz.com> since late 2005, when it began operating a consulting business with an emphasis in domain name monetization under the “Klickerz” name.
Respondent has been the subject of numerous press reviews and has spent well over $100,000 in advertisements, tradeshow sponsorships and other promotional devices. Respondent has also received significant media attention in connection with its <klickerz.com> domain name.

Respondent’s “Klickerz” business had been very successful: at one time, the business had over 200 clients and achieved gross annual revenue exceeding $10 million. Therefore, Respondent has acquired common law trademarks in the domain name <klickerz.com>. See Respondent’s Exhibits 3–8.

Respondent is using the disputed domain name in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i). Specifically, Respondent is using the disputed domain name to operate its consulting business, featuring its specialized e-mail account system. Respondent’s business is unrelated to and non-competitive with Complainant’s Classroom Response System business. See Respondent’s Exhibits 3 – 8.

Policy ¶ 4(a)(iii)

Complainant filed its Intent to Use Trademark Application on November 29, 2005, which matured into a 1A registered mark on December 25, 2007. So Respondent cannot have demonstrated bad faith registration of the <klickerz.com> domain name in 2003.
Respondent has been actively using the disputed domain name since its registration in 2003 in connection with its domain name consulting business. Respondent has not then engaged in bad faith under Policy ¶ 4(a)(iii), through an inactive holding of a domain name.
Complainant has demonstrated bad faith by failing to disclose facts to the Panel that are critical to the resolution of these proceedings. Had the Complaint included annexes of images of the <klickerz.com> domain name’s website, it would have been clear from the get-go that Respondent’s use of the disputed domain name was actually bona fide.
Complainant at no point contacted Respondent in any manner to discuss the <klickerz.com> domain name, and thus Respondent had no idea that there was another business.
Respondent alleges that Complainant has thus engaged in reverse domain name hijacking.

FINDINGS

Complainant has not met its burden of proof that Respondent has registered and is using the domain name <klickerz.com> in bad faith. Therefore, Panel has declined to analyze Policy 4(a)(1) and Policy 4(a)(2).

Complainant has not engaged in reverse domain name hi-jacking.

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."

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.

Identical and/or Confusingly Similar

As paragraph 4(a) of the Policy requires that the Complainant must prove each of three elements to obtain an order that a domain name should be cancelled or transferred, the Panel has declined to analyze Policy Paragraph 4(a)(i).

Rights or Legitimate Interests

Registration and Use in Bad Faith

The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

Respondent first registered the disputed domain name on May 25, 2003, according to Whois data as evidenced by Respondent’s Annex 13. Whereas, Complainant’s Annex I

demonstrates that Complainant filed an Intent to Use application on November 29, 2005, subsequently submitted proof of usage, and ultimately obtained a registration date of December 25, 2007. Therefore, Respondent cannot be said to have engaged in bad faith registration under Policy ¶ 4(a)(iii) where the Respondent’s domain name

registration predates the Complainant’s first use of the relevant mark. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).

The Panel further finds that Respondent has not registered or used the <klickerz.com> domain name in bad faith as it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).

Accordingly, the Panel holds that Complainant has failed to prove that Respondent demonstrated bad faith registration pursuant to Policy ¶ 4(a)(iii).

Reverse Domain Name Hi-Jacking

Even though Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”).

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <klickerz.com> domain name REMAIN WITH Respondent.

Complainant has not engaged in reverse domain name hi-jacking.

Carol Stoner, Esq., Panelist

Dated: December 26, 2013.