Renegade Power Boats v. Oscar A. Maita / Glovan Enterprises, inc.
Claim Number: FA1403001551719
Complainant is Renegade Power Boats (“Complainant”), represented by Gary L. Goodenow, Florida, USA. Respondent is Oscar A. Maita / Glovan Enterprises, inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <renegadepowerboats.com>, registered with DNC Holdings, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2014; the National Arbitration Forum received payment on April 14, 2014.
On April 17, 2014, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <renegadepowerboats.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. 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 April 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 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@renegadepowerboats.com. Also on April 23, 2014, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2104, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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. 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
While doing business in the USA near Renegade, Mr. Maita agreed to create and maintain the website for Renegade. Since then, Mr. Maita has relocated overseas to Venezuela. Renegade has contacted him there in order to make adds, moves and changes to the Website. However, Mr. Maita indicated that he is retired, that he no longer works in the internet website business and he does not have the information needed to control the Website. Since that conversation, he has not responded to Renegade. According to records of the State of Florida Department of Corporations, the original corporate entities through which Mr. Maita created Renegade’s website have gone out of business.
Online records show Mr. Maita owned two Florida for profit corporations: (i) Glovan Enterprises, Inc.; and (ii) PK2 USA, Inc. Through Glovan and PK2, Maita registered Renegade’s Website with DNC Holdings in approximately June 2002.
The last address for both Glovan and PK2 was 2100 Ponce De Leon Blvd., Suite 1202, Coral Gables, Florida 33134. Earlier, Glovan used the address 10773 Northwest 58th Street, Suite 603, Miami, Florida 33178. Earlier, PK2 used the address 1602 Alton Road, Suite 414, Miami Beach, Florida 33139.
Records of the State of Florida Department of State Division of Corporations reflect that both Glovan and PK2 are presently inactive and defunct. Renegade contacted Mr. Maita, who informed Renegade he presently resides in Venezuela, and Maita indicated he is retired and no longer services the Website.
Renegade’s records show that in approximately July 2008, Renegade paid DirectNIC.com LLC $44.95 on account number 711935726 to renew the domain name for the Website. In approximately May 2011, Renegade paid Network Solutions Customer Support $89.97 by order number 403893611 for another renewal. In approximately August 2011, Renegade paid Network Solutions Customer Support $34.99 by order number 368013224 for another renewal. Renegade understands the last renewal lasts until August 13, 2014.
The Website server and server location is Accelerated Data Works Inc., of Gainesville, FL, USA. It uses a Microsoft-IIS/6 web server. The programming language environment is ASP.NET. The IP is 216.155.109.108. It is powered byASP.NET. The Web Server is Microsoft-IIS/6. The Encoding is utf-8. The site was created on 2002-06-13. There was updated data on 2011-06-23. The expiration date is 2016-06-13
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has utterly failed to make a prima facie showing it is entitled to relief.
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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain:
(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.
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.”).
Complainant failed to claim it had any rights to any mark, much less this mark. Complainant did not demonstrate rights to a registered mark nor did it assert common law rights. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶4(a)(i)). While a complainant might establish common law rights under Policy ¶4(a)(i), this Complainant has not even made the assertion even though it has the burden of proof. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights require Complainant’s mark has established a secondary meaning. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning). In The Gourmet Depot v. DI S.A. / Administration DomComplainant, FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel stated that evidence relevant to proving secondary meaning “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”
The simple fact the disputed domain is identical to Complainant’s business name is not sufficient to demonstrate a mark in which Complainant has rights.
Since Complainant failed to establish rights to a mark, it must likewise follow the disputed domain name is not confusingly similar to Complainant’s unproven mark. As Complainant admits, “…This Complaint does not concern a situation where the domain name is identical or confusingly similar to a trademark…”
The Panel finds Policy ¶4(a)(i) NOT satisfied.
Complainant failed to even assert Respondent has no rights to the disputed domain name, much less present any facts to support such a contention.
The Panel finds Policy ¶4(a)(ii) NOT satisfied.
And this is the rub… Reading between the lines, Complainant hired Respondent to program and maintain a web site, which Respondent apparently did since June 13, 2002 (not that Complainant provided any documentary evidence, leaving it up to the Panel). Since at least July 31, 2007, the dispute domain was registered in Respondent’s name (according to the whois history on DomainTools.com).
Complainant did not object to its “internet house” being owned by a third party, for whatever reason. It would seem to be unreasonable to buy an “internet house” (or even a real house) and allow legal title to be held in someone else’s name, but that is exactly what the parties did. Certainly Complainant has not claimed otherwise.
Therefore, Respondent apparently registered the disputed domain name with Complainant’s permission. If Respondent registered the disputed domain name with Complainant’s permission (explicit or implied), it is axiomatic there can be no bad faith registration. Since that is an essential element of the cause of action, relief must be denied.
Complainant is admonished to contact the registrar directly because who hosts the web site is irrelevant in controlling a domain name. If the matter cannot be resolved with the registrar (with or without Respondent’s consent), Complainant’s only remedy is litigation, not the UDRP (at least under the sparse facts of this case).
The Panel finds Policy ¶4(a)(iii) NOT satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <renegadepowerboats.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, May 29, 2014
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