Priest Holmes v. Whois Protection
Service-ProtectFly.com a/k/a RegisterFly.com-Ref#10805654 aka
RegisterFly.com-Ref#10807773
Claim
Number: FA0406000288395
Complainant is Priest Holmes (“Complainant”), represented
by Melicent Boysen, of Initiatives Worldwide Inc.,
4112 Pennsylvania Ave., Suite 250, Kansas City, MO 64111. Respondent is Whois Protection Service-ProtectFly.com a/k/a
RegisterFly.com-Ref#10805654 a/k/a RegisterFly.com-Ref#10807773 (“Respondent”), 230 Park Avenue, Suite 864,
New York, NY 10169.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <teampriest.com> and
<teampriest.org>, registered with Enom, Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 19, 2004; the Forum received a hard copy of the
Complaint on June 25, 2004.
On
June 24, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain
names <teampriest.com > and <teampriest.org> are
registered with Enom, Inc. and that Respondent is the current registrant of the
names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration
agreement and has thereby agreed to resolve domain name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
July 7, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 27, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@teampriest.com
and postmaster@teampriest.org by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
August 4, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <teampriest.com> and
<teampriest.org> domain names are identical to Complainant’s TEAM
PRIEST mark.
2. Respondent does not have any rights or
legitimate interests in the <teampriest.com> and
<teampriest.org> domain names.
3. Respondent registered and used the <teampriest.com>
and <teampriest.org>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Priest Holmes, is an acclaimed National Football League and Kansas City Chiefs
player.
Complainant
initiated a trademark application with the United States Patent and Trademark
Office for the TEAM PRIEST mark on February 16, 2004 and first used the mark in
commerce in November 2003. Complainant
holds a certificate of organization, dated August 11, 2003, for Team Priest,
L.L.C. with the Texas Office of Secretary of State.
Complainant
states that the listed registrant, Respondent, is the same as its former
employee, Christopher Bush, but does not include any evidence in the Complaint
verifying that statement.
Respondent
registered the <teampriest.com> domain name on June 7, 2003. Complainant asserts that Respondent was an
employee of Complainant at the time of registration and was to register the
domain name in Complainant’s name. The
disputed domain name was established so that Complainant could interact directly
with his fans. Respondent is not using
the domain name in connection with any goods or services, and no website can
currently be accessed through the domain name.
Respondent
registered the <teampriest.org> domain name on March 31,
2004. The Complaint does not explicitly
state how the domain name is currently being used.
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."
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.
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’s
pending trademark application, without more, does not demonstrate rights in the
TEAM PRIEST mark. The Panel finds that,
since Complainant has failed to present sufficient evidence of trademark or
service mark rights in the TEAM PRIEST mark, Complainant cannot satisfy its
burden under the first factor of the Policy.
See Razorbox, Inc. v.
Torben Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (finding that Complainant did not
establish the requisite trademark or common law rights to grant Complainant the
necessary standing for the Panel to find in its favor as Complainant’s pending
trademark application did not, in and of itself, demonstrate trademark rights
in the mark applied for); see also Amsec
Ent. v. McCall,
D2001-0083 (WIPO Apr. 3, 2001) (finding that Complainant’s pending trademark
applications do not establish any enforceable rights to the mark until a
trademark registration is issued).
Furthermore,
Complainant has not proven sufficient common law rights in the TEAM PRIEST
mark, because Complainant failed to provide evidence that would establish any
secondary meaning associated with its goods or services. Complainant’s submission of a certificate of
organization with the Texas Office of Secretary of State does not establish
that Complainant’s TEAM PRIEST mark has acquired secondary meaning. Complainant’s assertion that its products
and mark have acquired a reputation among consumers is insufficient without
supporting evidence to show secondary meaning.
See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May
19, 2003) (“Although
Complainant asserts common law rights in the WELLSERV mark, it failed to submit
any evidence indicating extensive use or that its claimed mark has achieved
secondary source identity . . . [a]lthough Complainant’s WELLSERV product and
related services may be well-known among relevant consumers, that is a finding
that must be supported by evidence and not self-serving assertions.); see
also Molecular Nutrition, Inc. v. Network News and Publ’ns, FA 156715 (Nat.
Arb. Forum June 24, 2003) (approving of and applying the principals outlined in
prior decisions that recognized “common law” trademark rights as appropriate
for protection under the Policy “if the complainant can establish that it has
done business using the name in question in a sufficient manner to cause a
secondary meaning identifiable to Complainant's goods or services”); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb.
Forum Dec. 11, 2001) (finding that, without further evidence of common law
trademark, Complainant did not establish rights to the CYBERIMPRINTS.COM mark
within the meaning of Policy ¶ 4(a)(i) by registering its company name
CYBERIMPRINTS.COM, INC. with the California Secretary of State).
Furthermore, the
<teampriest.com> and <teampriest.org> domain names
are comprised of two generic terms, “team” and “priest,” which may cause the
Complainant’s pending trademark application to be denied. Nevertheless, the Panel concludes that
Complainant has not established the requirements of Policy ¶ 4(a)(i). See Knight-Ridder, Inc. v. Cupcake Patrol, FA 96551 (Nat. Arb. Forum
Mar. 6, 2001) (finding that the domain name <hearld.com> is not identical
or confusingly similar to a trademark in which Complainant has rights); see
also Capt’n Snooze Mgmt. v. Domains 4
Sale, D2000-0488 (WIPO July 10, 2000) (stating that while “Snooze is an
integral part of Complainant’s trademark registrations…this does not entitle
the Complainant to protection for that word alone”).
Thus,
Complainant has failed to establish Policy ¶ 4(a)(i).
Since
Complainant has failed to establish the first element of the Policy, it is unnecessary
to address the claims under the remaining two elements. See Creative Curb v. Edgetec Int’l Pty. Ltd.,
FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant
must prove all three elements under the Policy, Complainant’s failure to prove
one of the elements makes further inquiry into the remaining element
unnecessary).
Having failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Accordingly, it
is Ordered that the <teampriest.com > and <teampriest.org>
domain names REMAIN WITH Respondent.
Tyrus R. Atkinson, Jr., Panelist
Dated:
August 17, 2004
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