Manuel Pinazo v. DHARSHINEE NAIDU
Claim Number: FA1603001666188
Complainant is Manuel Pinazo (“Complainant”), Florida, USA. Respondent is DHARSHINEE NAIDU (“Respondent”), represented by Stefan Vogel, Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vierge.com>, registered with eNom, Inc.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2016; the Forum received payment on March 17, 2016.
On March 23, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <vierge.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 March 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2016 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@vierge.com. Also on March 25, 2016, 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 April 4, 2016.
On April 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
For the last twenty years, Complainant has operated an online retail store offering a wide variety of mobile phones and mobile phone accessories. Complainant has filed a trademark application for the VIERGE mark for trademark protection with the United States Patent and Trademark Office (“USPTO”) (Serial No. 86,888,697, filed on January 27, 2016). Respondent’s <vierge.com> is identical to the VIERGE mark as it incorporates the mark in its entirety.
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by <vierge.com>, nor has it obtained permission to make use of the mark. Respondent is using the domain name to redirect Internet users seeking Complainant to a webpage that offers “sexual conversations” with women. Respondent’s use of the mark in promoting a website offering adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered the disputed domain name in bad faith. Respondent has been involved in previous UDRP proceedings that resulted in the disputed domain name being transferred. Respondent’s use of <vierge.com> disrupts Complainant’s legitimate business purpose. Respondent is using the disputed domain name in an attempt to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s business. Respondent provided false registrant information to the registrar.
B. Respondent
Respondent’s registered <vierge.com> on July 23, 1997. This registration predates Complainant’s USPTO trademark application by more than 18 years.
Respondent has rights and legitimate interests in the domain. Respondent selected and registered the domain as part of a portfolio of domains to build into portals of information or services. The word “vierge” is French for the generic term “virgin” or “Virgo.” The disputed domain name redirects to Respondent’s search engine which returns results connected with the generic term “vierge.” Some of the results are adult oriented, however, none are illegal or pornographic.
Respondent’s use of the disputed domain name does not compete with Complainant. Respondent denies having any knowledge of Complainant’s rights in the VIERGE mark at the time it registered <vierge.com>, as Complainant was not in possession of any such rights at that time. Respondent did not provide false registrant information to the domain name registrar. Respondent admits to prior adverse UDRP findings against it.
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.
Complainant alleges that it operates an online retail store offering a wide variety of mobile phones and mobile phone accessories. Complainant has provided evidence that Vierge Group filed an intent-to-use application for the VIERGE mark for trademark protection with the USPTO (Serial No. 86,888,697, filed on January 27, 2016). However, pending trademark applications have been found insufficient to establish rights in a mark. See Computer Nerds Int’l, Inc. v. Ultimate Search, FA 155179 (Nat. Arb. Forum June 23, 2003) (“Complainant's pending trademark applications do not establish its rights in the mark pursuant to Policy 4(a)(i).”). Complainant also asserts that it has used the VIERGE mark in connection with its business operations for the last twenty years. However, Complainant has failed to provide evidence to support this assertion. Further, the fact that an intent-to-use, rather than an actual use, application was filed for VIERGE, does not support the contention of long prior use of this mark. Therefore, this Panel finds that Complainant lacks rights in the VIERGE mark under Policy 4(a)(i).
Thus, Complainant has not satisfied Policy 4(a)(i).
Since Complainant has not satisfied Policy ¶ 4(a)(i), 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 <vierge.com> domain name REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: April 19, 2016
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