Click Here, LLC v Popescu Ion
Claim Number: FA1410001587135
Complainant is Click Here, LLC (“Complainant”), represented by M. Keith Lipscomb of Lipscomb, Eisenberg & Baker, P.L., Florida, USA. Respondent is Popescu Ion (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freex-art.com>, registered with Paknic (Private) Limited.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2014; the National Arbitration Forum received payment on October 28, 2014.
On October 29, 2014, Paknic (Private) Limited confirmed by e-mail to the National Arbitration Forum that the <freex-art.com> domain name is registered with Paknic (Private) Limited and that Respondent is the current registrant of the name. Paknic (Private) Limited has verified that Respondent is bound by the Paknic (Private) Limited 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 October 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@freex-art.com. Also on October 31, 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 December 1, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <freex-art.com> domain name is confusingly similar to Complainant’s X-ART mark.
2. Respondent does not have any rights or legitimate interests in the <freex-art.com> domain name.
3. Respondent registered and uses the <freex-art.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the X-ART mark to identify goods sold in its adult-oriented entertainment business, namely photographs and videos obtainable over the Internet. The mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,300,297, registered Mar. 12, 2013, filed Feb. 21, 2012). Complainant has conducted business under the X-ART mark since November 2007, and operates a website at <x-art.com>. The extent of Complainant’s use of the X-ART mark prior to 2011 is not clear.
Respondent registered the <freex-art.com> domain name on April 22, 2011, and uses it to offer copies of Complainant’s X-ART material to Internet users free of charge.
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.
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.”).
The Panel finds that Complainant has rights in its X-ART mark through registration with the USPTO, dating back to the February 21, 2012 filing date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant argues that it has done business under the X-ART mark since November 2007, and operates a website at <x-art.com>. The Panel notes that the website at <x-art.com> appears to have been created in 2009. However, Complainant did indicate the volume of traffic at the website, and did not otherwise provide any evidence showing the extent of the use of the X-ART mark prior to April of 2011, when Respondent registered the disputed domain name. Complainant states that it “has spent substantial time, effort, and money advertising and promoting the trademarks” but neglects to specify how much time, effort and money was spent and during what period of time. Therefore, it is impossible to determine if Respondent knew of Complainant’s mark at the time of registration of the disputed domain name. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”)
Thus, the Panel concludes that Complainant has not established rights in the X-ART mark at the relevant time, namely April 2011, and therefore has not satisfied Policy ¶ 4(a)(i). Since Complainant has failed to establish the first of the three required elements under the UDRP, the Panel declines to analyze the other two elements of the Policy. 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)).
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 <freex-art.com> domain name REMAIN WITH Respondent.
Sandra J. Franklin, Panelist
Dated: December 4, 2014
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