ForeverLawn Inc. v. SYNLawn
Claim Number: FA0604000671846
PARTIES
Complainant is ForeverLawn Inc. (“Complainant”), 5600 McLeod Rd. NE, Unit C, Albuquerque, NM 87109. Respondent is SYNLawn (“Respondent”), represented by Mark D. Passler, of Akerman Senterfitt, 222 Lakeview Avenue, Suite 4000, West Palm Beach, FL 33401.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foreverlawn.com>,
registered with Go Daddy Software, Inc.
PANEL
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.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 5, 2006; the National Arbitration Forum received a hard
copy of the Complaint on April 10, 2006.
On April 5, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <foreverlawn.com>
domain name is registered with Go Daddy Software, Inc. and that the 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 April 18, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 8, 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@foreverlawn.com by e-mail.
A timely Response was received and determined to be complete on May 8,
2006.
On May 15, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Kendall C. Reed as Panelist.
On or about May 16, 2006, an additional submission was received from
Complainant and was forwarded to the Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
It is critical for this matter that Paragraph 4(a)(iii) of the Policy
itself has two elements which must both be proven, to wit: that “the domain
name has been registered and is being
used in bad faith.” (emphasis added) It
follows that a complainant cannot prevail if the respondent was not acting in
bad faith at the time the respondent registered the domain name in question. See Ode v. Inership Ltd., D2001-0074 (WIPO May 1, 2001) (“We are of the
unanimous view that the trademark must predate the domain name.”); see also Interp Nat’l Radio Sales, Inc. v.
Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad
faith where the respondent registered the domain prior to the complainant’s use
of the mark); see also Open Sys.
Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding
no bad faith where the respondent registered the domain name in question before
application and commencement of use of the trademark by the complainant).
The Policy does not exhaustively define “bad faith,” but it does
provide guidance in Paragraph 4(b), which reads:
“b. Evidence of Registration and Use in Bad
Faith. For the purposes of Paragraph
4(a)(iii), the following circumstances, in particular but without limitation,
if found by the Panel to be present, shall be evidence of the registration and
use of a domain name in bad faith:
(i)
circumstances indicating that you have registered or you have acquired the
domain name primarily for the purposes of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the owner
of the trademark or service mark or to a competitor of that complainant, for
valuable consideration in excess of your documented out-of-pocket costs
directly related to the domain name; or
(ii)
you have registered the domain name in order to prevent the owner of the
trademark or service mark form reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or
(iii)
you have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv)
by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or other on-line location, by
creating a likelihood of confusion with complainant’s mark as to the source,
sponsorship. Affiliation, or endorsement of your web site or location or of a
product or service on your web site or location.”
It is instructive to note that subsections (i), (ii), and (iv) all
presuppose the prior existence of trademark or service mark rights on the part
of a complainant. Subsection (iii)
presupposes prior existence of the complainant. Without exploring further what other actions on the part of a
respondent might amount to bad faith, this Panel takes it as a fair
generalization that bad faith conduct cannot occur unless a complainant possesses
some form of rights prior to the time the respondent registers its domain name.
In the present matter, Complainant states in its Complaint that it was
formed and began using the expression “foreverlawn” in March of 2004. Complainant further states in its Complaint
that at that time, March of 2004, the domain name <foreverlawn.com>
was previously registered, without identifying the registrant. Attached as an exhibit to Complainant’s
Complaint is a copy of the GoDaddy.com WHOIS registry record for the <foreverlawn.com>
domain name, and this record shows that this domain name was created on October
10, 2002. Respondent alleges in its
Response that it registered the domain name <foreverlawn.com> on
October 10, 2002, and this allegation is uncontroverted by Complainant. As such, this Panel finds that on October
10, 2002 Complainant did not posses any relevant prior rights for purposes of
the Policy, and as such, Respondent was not acting in bad faith for purposes of
the Policy when it registered the <foreverlawn.com> domain name on
that date. This being the case,
Complainant cannot prove Paragraph 4(a)(iii) of the Policy.
Having found that one of the required elements under Paragraph 4(a) of
the Policy has not been proven, it is not necessary to inquire into the other
two elements. See Razorbox. v. Torben Skjodt, FA 150795
(Nat Arb. Forum May 9, 2003) (“[B]ecause 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.”)
DECISION
Claimant 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 <foreverlawn.com>
domain name not be transferred and that it remain with Respondent.
Kendall C. Reed, Panelist
Dated: May 29, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National Arbitration Forum