AMCO Marketing Corporation v. Zeshan Kassam / Remco Insurance
Claim Number: FA1312001535370
Complainant is AMCO Marketing Corporation (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is Zeshan Kassam / Remco Insurance (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <remcoinsurance.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2013; the National Arbitration Forum received payment on December 19, 2013.
On December 19, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <remcoinsurance.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 15, 2014 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@remcoinsurance.net. Also on December 26, 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 January 9, 2014.
Complainant filed a timely Additional Submission, which was received and found to be compliant on January 14, 2014.
On January 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complaint is based upon Complainant’s ownership of United States Trademark Registration No. 3,376,584 for the mark REMCO INSURANCE (the “Mark”). A copy of the registration is attached to the Complaint as Exhibit 4. Complainant applied to register the Mark with the United States Patent and Trademark Office (“USPTO”) on July 10, 2006, on an intent-to-use basis, for the services of managing the operations of insurance agencies and brokers on an outsourcing basis, in International Class 35. Based upon its use and registration, Complainant’s rights in the Mark originated on the filing date of the application, July 10, 2006.
Respondent’s <remcoinsurance.net> domain name (the “Domain Name”) is confusingly similar to the Complainant’s Mark.
Respondent has no rights or legitimate interest with respect to the Domain Name. He registered it on October 12, 2006, months after Complainant acquired its rights in the Mark. He is using the Domain Name to misdirect traffic to its website and to its services offered in competition or in a very similar industry to the services provided by Complainant.
Respondent registered and is using the Domain Name in bad faith. He was aware of the rights retained by Complainant when he registered it. He is using the Domain Name to disrupt Complainant’s business, and Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of his website.
B. Respondent
Respondent has the d/b/a for “Remco Insurance” and, in the name of Crestar Investment Corp., owns the rights to do business with that name in the State of Texas. Respondent attached a Certificate of Assumed Name issued by the clerk of Harris County, Texas., showing that Crestar Investment Corp registered the REMCO INSURANCE assumed name on May 25, 2006.
The ownership and use of the name are being litigated at the current time.
C. Complainant’s Additional Submission
Proof of mere registration of a company name, without more, is not sufficient to demonstrate that a respondent was commonly known by a subsequently registered domain name. Paragraph 4 (c)(ii) of the Policy requires some actual use of the name more than the mere registration thereof.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The Panel makes the findings and determinations set forth below with respect to the Domain Name at issue between the parties.
Complainant bases its claim of rights and interest in the REMCO INSURANCE mark almost entirely upon its USPTO registration. The registration certificate for the Mark, however, shows the registered owner thereof as one “Rehmat Peerbhai (Texas Corporation),” of Houston, Texas. See Exhibit 4 to the Complaint. Complainant, which is based in Austin, Texas, alleges that it is the owner of the Mark but offers no proof of how it may have acquired it from Mr. Peerbhai, the owner shown on the registration statement. It may be that Complainant does have rights to the federal registration, but the record is devoid of any evidence to that effect. The Panel is unable to conclude that Complainant has rights to the Mark based upon the USPTO registration.
Normally, complainants submit evidence that they have common law rights to the mark at issue in their cases. Such evidence typically consists of newspaper articles, correspondence, and Internet and other forms of advertising, demonstrating use of their mark in commerce sufficient to establish common law rights. This Complainant, however, has tendered nothing of the sort. Indeed, it seems to take care to avoid making any such claim by using the phrase “use and/or registration” of the Mark throughout the Complaint. There are occasional references to use of the Mark, but they seem directed at the USPTO registration rather than establishing any kind of common law rights. Complainant fails to describe or present evidence of its actual business operations under the REMCO INSURANCE name in such a way as to persuade a fact finder that it actually uses that name in commerce. The possibility of such use is there, but there is no substantive, credible evidence of that in the record.
The Panel therefore concludes that Complainant has failed to demonstrate its rights to the REMCO INSSURANCE mark.
Complainant’s ownership of a trade or service mark implicated by the Domain Name is the first element of proof a complainant must meet under Policy ¶4(a). This Complainant having failed to meet that burden, the Panel will not address any of the other elements of this claim. 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 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)). Recognizing, however, that it may be possible for Complainant to prove its ownership of the Mark by offering evidence in a new case that was not tendered in this one, the Panel elects to dismiss the claim rather than enter a final order denying the relief and ordering that the Domain Name remain with Respondent.
Accordingly, it is Ordered that this Complaint be DISMISSED, WITHOUT PREJUDICE.
Charles A. Kuechenmeister
January 16, 2014
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