TriPacific Capital Advisors, LLC v. ahura fze / domain admin
Claim Number: FA1311001530299
Complainant is TriPacific Capital Advisors, LLC (“Complainant”), represented by Daniel M. Livingston of Payne & Fears LLP, California, USA. Respondent is ahura fze / domain admin (“Respondent”), represented by Howard Neu of Law Office of Howard Neu, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tripacific.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
The Hon. Neil Anthony Brown QC, G. Gervaise Davis III and the Hon. Bruce E. Meyerson (Ret.) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 17, 2013; the National Arbitration Forum received payment on November 18, 2013.
On November 19, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <tripacific.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@tripacific.com. Also on November 22, 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 12, 2013.
On December 19, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed The Hon. Neil Anthony Brown QC, G. Gervaise Davis III and the Hon. Bruce E. Meyerson (Ret.) as Panelists.
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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has common law rights in the TRIPACIFIC mark through its continuous use and the ability to establish secondary meaning.
2. Respondent’s <tripacific.com> domain name is identical to Complainant’s TRIPACIFIC mark because it incorporates Complainant’s mark in its entirety with the addition of the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the <tripacific.com> domain name.
4. Respondent admits to being a cyber-squatter and currently has a goal to attain hundreds or thousands of generic domain names.
5. Respondent is not commonly known by the disputed domain name.
6. Complainant’s use of the TRIPACIFIC mark predates Respondent’s registration of the disputed domain name.
7. Respondent is not licensed or authorized to use Complainant’s TRIPACIFIC mark.
8. The WHOIS information for the disputed domain name lists “ahura fze” as registrant.
9. Respondent is not making a bona fide offering of goods or services or a noncommercial fair use of the disputed domain name.
10. Respondent is willing to sell the disputed domain name for an exorbitant price.
11. Respondent uses the disputed domain name to resolve to a website featuring links to websites with investment “buzzwords” such as “loans,” and “mortgages” relating to Complainant’s business.
12. Respondent has registered and is using the disputed domain name in bad faith.
13. Respondent deliberately registered the disputed domain name with the intent to sell it for an inflated price.
14. Respondent uses the disputed domain name to capitalize on the confusion of misdirected Internet traffic.
15. Respondent presumably receives pay-per-click revenue from the website resolving from the disputed domain name.
B. Respondent
1. Complainant owns no registrations for the trademark TRIPACIFIC.
2. Respondent registered the disputed domain name on July 18, 2001.
3. Respondent’s disputed domain name could not have been registered with knowledge of Complainant because Complainant’s first use is listed as 2005.
4. Complainant fails to provide evidence of continuous use or secondary meaning.
5. Respondent is in the triathlon business and the “tri” in TRIPACIFIC has always stood for “triathlon.”
6. Domain name investing is acknowledged as a legitimate business.
7. Respondent’s use of the disputed domain name makes no reference to Complainant and does not cause confusion.
8. Respondent did not approach Complainant to sell the domain name, but merely responded to Complainant’s inquiry.
9. The links featured on the parked page are provided by the parking company, not the registrant.
10. Respondent is not imitating Complainant’s website or attempting to pass itself off as Complainant.
11. Complainant is unable to exhibit evidence of bad faith registration and use.
12. The doctrine of laches should apply because Complainant delayed bringing this action.
13. Complainant has engaged in reverse domain name hijacking.
Because Respondent registered the domain name over four years before the Complainant began using its mark in commerce the Complainant did not establish bad faith registration of the domain name.
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.
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii), the Panel declines to analyze the other two elements of the Policy.[1] E.g., 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); Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The record indicates that Respondent registered the <tripacific.com> domain name over four years before Complainant’s acknowledged first use of the TRIPACIFIC mark. The WHOIS information for Respondent’s domain name indicates that the domain name was registered on July 18, 2001. Complainant’s first use in commerce of the TRIPACIFIC mark was not until December 5, 2005.[2] It is well established that a respondent does not act in bad faith where it registers a domain name prior to a complainant’s use of a mark.[3] E.g., Aiden fung v. terry zimmer, FA 1396869 (Nat. Arb. Forum Aug. 18, 2011) (no bad faith found where the complainant failed to provided evidence of common law rights before the domain name was registered); Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (no bad faith found where the domain name was registered three years before the complainant began using the mark).
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 <tripacific.com> domain name REMAIN WITH Respondent.
Hon. Neil Brown QC, G. Gervaise Davis III
and Hon. Bruce E. Meyerson (Ret.), Panelists
Dated: December 26, 2013
[1] In light of the Panel’s conclusion, it is not necessary to consider Respondent’s argument that the doctrine of laches should bar the Complaint, the Complainant having waited eight years to bring the Complaint without explanation for the delay.
[2] The Panel expresses no opinion on whether Complainant’s evidence established common law rights in the TRIPACIFIC mark.
[3] There is no evidence of opportunistic bad faith.
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