Maple Donuts, Inc. v. Technology Investments Group, Inc.
Claim Number: FA0703000930711
Complainant is Maple Donuts, Inc. (“Complainant”), represented by David
F. Dieteman, of Manufacturers' Association,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mapledonuts.com>, registered with Go Daddy Software, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 26, 2007 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@mapledonuts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <mapledonuts.com> domain name is identical to Complainant’s MAPLE DONUTS mark.
2. Respondent does not have any rights or legitimate interests in the <mapledonuts.com> domain name.
3. Respondent registered and used the <mapledonuts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Maple Donuts, Inc., has registered the MAPLE
DONUTS mark with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 3,032,313 issued
Respondent registered the <mapledonuts.com> domain name on behalf of Complainant on
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 Complainant has registered the MAPLE DONUTS mark with the USPTO, the federal registration says that no claim is made to the use of the words “maple” and “donuts” apart from the design mark shown. Therefore, there is no USPTO protection for the mark. Even without the trademark registration, Complainant has failed to submit sufficient evidence showing that its mark has acquired secondary meaning in connection with its bakery products and services. A simple affidavit of long-standing use and association of the mark in the mind of the public would have been sufficient. Therefore, the Panel finds that Complainant has failed to establish rights in the MAPLE DONUTS mark under Policy ¶ 4(a)(i). See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); see also Build-A-Bear Workshop, Inc. v. Chris Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDER marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning).
The Panel concludes that Complainant has failed to satisfy Policy ¶ 4(a)(i) and dismisses this Complaint without prejudice. Complainant is free to refile with more evidence of its common law rights in the MAPLE DONUTS mark.
Inquiry into these
two elements in unnecessary, as Complainant has not satisfied Policy ¶ 4(a)(i). See 01059
GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the
complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a
mark, the panel need not consider whether the respondent has rights or
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or
whether it registered and is using the disputed domain name in bad faith under
Policy ¶ 4(a)(iii); see also Creative Curb v.
Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED without prejudice.
James A. Carmody, Esq., Panelist
Dated: April 13, 2007
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