Hallier Properties, LLC v. Domaincar
Claim Number: FA0601000637731
Complainant is Hallier Properties, LLC (“Complainant”), represented by Randon Hansen, 4230 S. Decatur, Suite 200, Las Vegas, NV 89103. Respondent is Domaincar (“Respondent”), Galerias 3, Zona 5 5235, Panama.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <panoramatowers.org>, registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 31, 2006.
On February 4, 2006, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com confirmed by e-mail to the National Arbitration Forum that the <panoramatowers.org> domain name is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. DSTR Acquisition VII, LLC d/b/a Dotregistrar.com has verified that Respondent is bound by the DSTR Acquisition VII, LLC d/b/a Dotregistrar.com 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 February 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 27, 2006 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@panoramatowers.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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." 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 makes the following assertions:
1. Respondent’s <panoramatowers.org> domain name is identical to Complainant’s PANORAMA TOWERS mark.
2. Respondent does not have any rights or legitimate interests in the <panoramatowers.org> domain name.
3. Respondent registered and used the <panoramatowers.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hallier Properties, LLC, is a developer of high-rise condominiums in Las Vegas, Nevada. Complainant holds domain name registrations for the <panoramatowers.com>, <panoramatowers.net>, <panoramatowers.biz>, <panoramatowers.info>, <panoramatowers.us>, <panoramatowers.tv>, and <panoramatowers.cc> domain names. Complainant uses the PANORAMA TOWERS mark in connection with its business operations through domain name registrations, advertising, and the development of the Panorama Towers I, II, III, and IV properties.
Complainant provides its application for the registration of the PANORAMA mark with the United States Patent and Trademark Office (“USPTO”), and asserts that it is applying for the registration of the PANORAMA TOWERS mark, but does not hold a valid registration with the USPTO for either mark.
Respondent registered the <panoramatowers.org> domain name on July 26, 2005. Respondent is using the disputed domain name to direct Internet users to a search engine website featuring links to products in direct competition with Complainant’s business.
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. 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.”).
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.
Although it is clear that the <panoramatowers.org> domain name is identical to Complainant’s name under the Policy, Complainant has not established any rights to PANORAMA TOWERS as a mark. Complainant’s assertion that it is applying for registration of the PANORAMA TOWERS mark with the USPTO does not establish rights in the mark. See Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s pending trademark applications did not establish rights because “an application for [a] mark is not per se sufficient to establish rights [in] a trademark for the purposes of the [Policy]”); see also ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Complainant’s mere application to the USPTO to register the ECG mark is insufficient to establish rights to the mark.”).
Complainant has not provided any evidence of a registration for the PANORAMA TOWERS mark, so Complainant must demonstrate that it has common law rights by establishing strong customer identification of the mark as an indication of Complainant as the source of products or services associated with the mark. See 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 the complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services).
Complainant does not assert any common law rights in the PANORAMA TOWERS mark. Moreover, Complainant fails to offer any evidence that customers strongly identify Complainant as the source of any goods or services offered under the PANORAMA TOWERS mark. Complainant also fails to assert the duration for which it has continuously used the PANORAMA TOWERS mark. Therefore, the Panel finds that Complainant’s evidence is insufficient to establish common law rights through secondary meaning. See Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also 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 . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”).
The Panel finds that Policy ¶ 4(a)(i) has not been satisfied.
As a result of Complainant’s failure 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 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).
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 <panoramatowers.org> domain name REMAIN WITH Respondent.
James A. Crary, Panelist
Dated: March 20, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum