O.C. Seacrets, Inc. v. Southern
TradeWINs, Inc.
Claim
Number: FA0409000328042
Complainant is O.C. Seacrets, Inc. (“Complainant”), represented
by Steven D. Lustig, 1615 L. St. NW, Suite 850,
Washington, DC 20036. Respondent is Southern TradeWINs, Inc. (“Respondent”),
16537 NW 7th St., Suite G01, Pembroke Pines, Florida 33028.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <jamaicausa.com>, registered with Go
Daddy Software, 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 September 14, 2004; the Forum received a hard copy of the
Complaint on September 15, 2004.
On
September 15, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <jamaicausa.com> is registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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
September 16, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 6, 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@jamaicausa.com 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
October 15, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jamaicausa.com>
domain name is identical to Complainant’s JAMAICA USA mark.
2. Respondent does not have any rights or
legitimate interests in the <jamaicausa.com> domain name.
3. Respondent registered and used the <jamaicausa.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, O.C. Seacrets, Inc., is in the restaurant and
bar services business.
Complainant owns a registration with the United States Patent and
Trademark Office for its JAMAICA USA mark (Reg. No. 2,057,555 issued Apr. 29,
1997). Complainant listed its first use
of the mark in commerce as May 1990.
Complainant uses this mark in association with its restaurant and bar
services and apparel.
Respondent registered the <jamaicausa.com> domain name on November 14, 2002. Complainant provides no evidence as to the
use of the disputed domain name.
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 has
established in this proceeding that it has rights in the JAMAICA USA mark
through registration with the United States Patent and Trademark Office and
continuous use of its mark in commerce since at least 1990. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
The <jamaicausa.com>
domain name registered by Respondent is identical to Complainant’s JAMAICA USA
mark because the domain name incorporates Complainant’s mark in its entirety,
deviating only by the elimination of a space and the generic top-level domain
(gTLD) “.com.” The Panel finds that the
omission of a space from and the addition of a gTLD to a registered mark are
irrelevant to and do not negate the identical nature of the domain name. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430
(S.D.N.Y. 1997), aff’d 152 F.3d 920 (2d Cir. 1998), cert. denied
525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and
defendant’s <plannedparenthood.com> domain name nearly identical). The Panel further concludes that this is
sufficient to prove this element. See
Shirmax Retail Ltd. v. CES Mktg. Group Inc., AF-0104 (eResolution Mar.
20, 2000) (refusing to interpret Policy
4(a)(i) in the conjunctive rather than disjunctive sense in holding that
"mere identicality of a domain name with a registered trademark is
sufficient to meet the first element [of the Policy], even if there is no
likelihood of confusion whatsoever").
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the <jamaicausa.com>
domain name that contains Complainant’s JAMAICA USA mark in its entirety. Due to Respondent’s failure to respond to
the Complaint, the Panel assumed that Respondent lacks rights and legitimate
interests in the disputed domain name.
In fact, once Complainant makes a prima facie case in support of
its allegations, the burden shifts to Respondent to show that it does have
rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist);
see also Woolworths plc. v.
Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of
preparation to use the domain name for a legitimate purpose, the burden of
proof lies with Respondent to demonstrate that it has rights or legitimate
interests).
However,
Complainant has provided no evidence as to the use of the <jamaicausa.com>
domain name and has merely asserted that Respondent has no rights or legitimate
interests, which is not sufficient to support a finding that Respondent lacks
rights or legitimate interests. See
Lush
LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001)
(finding that even when Respondent does file a Response, Complainant must
allege facts, which if true, would establish that Respondent does not have any
rights or legitimate interests in the disputed domain name); see also Graman
USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16,
2003) (finding that absent a showing of any facts by Complainant that establish
Respondent lacks rights or legitimate interests in the disputed domain name,
the Panel may decline to transfer the disputed domain name); see also VeriSign
Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that
Respondent's default does not automatically lead to a ruling for Complainant).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has not been satisfied.
Complainant made
general allegations that Respondent registered and used the <jamaicausa.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). However, Complainant provided no factual
evidence to support its allegations.
Thus, there is no factual basis to allow the Panel to find bad faith
registration and use. See PRL
USA Holdings, Inc. v. Polo, D2002-0148 (WIPO April 29, 2002) (finding that
because Complainant failed to provide any factual allegations as to the nature
of use of the disputed domain name, Complainant failed to prove that
Respondent’s domain names were being used in bad faith); see also Graman
USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16,
2003) (finding that general allegations of bad faith without supporting facts
or specific examples do not supply a sufficient basis upon which the Panel may
conclude that Respondent acted in bad faith); see also White Pine Software, Inc. v. Desktop
Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000) (declining to transfer
the domain name where a full factual record has not been presented to the Panel
such that a conclusive determination can be made regarding the parties’
respective claims to the contested domain name).
The Panel finds
that Policy ¶ 4(a)(iii) has not been satisfied.
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 <jamaicausa.com> domain name be REMAIN WITH
Respondent.
Tyrus R. Atkinson, Jr., Panelist
Dated:
October 29, 2004
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