Lisa Larae Cline v. Pleasure
Boutique
Claim Number: FA0703000937086
PARTIES
Complainant is Lisa Larae Cline (“Complainant”), represented by Robert
L. Shaver of Dykas, Shaver & Nipper, LLP, PO Box
877, Boise, ID 83701-0877.
Respondent is Pleasure Boutique (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pleasureboutique.com>, registered
with Network
Solutions, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically March 13, 2007; the
National Arbitration Forum received a hard copy of the Complaint March 19, 2007.
On March 14, 2007, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <pleasureboutique.com> domain name is
registered with Network Solutions, Inc.
and that Respondent is the current registrant of the name. Network
Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement
and thereby has agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On March 27, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 16, 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@pleasureboutique.com by e-mail.
A timely Response was received and determined to be incomplete on April 2, 2007.
Neither party filed Additional Submissions.
On April 20, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
makes the following allegations in this proceeding:
1.
Respondent
registered a domain name, <pleasureboutique.com>, that is
identical to or confusingly similar to a mark in which Complainant has
exclusive rights.
2.
Respondent
has no rights to or legitimate interests in the mark contained within the
disputed domain name.
3.
Respondent
registered and used the domain name in bad faith.
B.
Respondent
makes the following points in Response:
1.
Respondent
filed a nine-page outline entitled “Introduction to Legal Methods and Process.”
Respondent makes no presentation for the
first element that the disputed domain name is identical to or confusingly
similar to a mark in which Complainant has rights.
2.
Respondent
makes no Response directed to the second element of rights to and legitimate
interests in the domain name.
3.
Respondent
makes no Response directed to the third element of bad faith registration and
use.
C. Additional Submissions
Neither party filed
additional submissions.
FINDINGS
Complainant is Lisa Larae Cline, President of Pleasure Boutique,
according to the Complaint. Complainant
purports to be the holder of the trademark PLEASURE BOUTIQUE; however, the
United States Patent and Trademark Office issued a service mark registration
for PLEASURE BOUTIQUE to LARAE, INC., identified as an Idaho Corporation. The USPTO registration was issued July 12,
2005; however LARAE, INC. apparently supported the application with the
assertion of a first use in commerce date of March 31, 1998.
Respondent registered the <pleasureboutique.com> domain name July 28, 2001, and the registrant is shown as Pleasure
Boutique, in
Complainant supported her Complaint with a xerox copy of
the USPTO Registration information.
Respondent brought no support and a
deficient Response.
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 Complainant to 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;
(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.
Deficient Response
The Panel addresses first Respondent’s
deficient Response. The Response was
filed timely but was deficient in that a hard copy of the Response was not
received by the Forum by the date of the deadline for filing a hard copy of the
Response. The Panel has discretion to
decide whether or not to consider Respondent’s submission when the submission
is not in compliance with the rules. See Schott Glas v. Necschott, D2001-0127 (WIPO Mar.
14, 2001) (choosing not to consider the response in light of formal
deficiencies); see also Telstra Corp. v.
The Panel has reviewed the submissions of both parties and finds that the deficient nature of the Response is irrelevant to the outcome here. The Response is an unsigned outline entitled “Introduction to Legal Methods and Process” and nothing in it addresses the elements in this dispute.
Respondent’s Failure To Substantively Reply To Complaint
The Panel
next addresses Respondent’s failure to substantively reply to the
Complaint. Respondent’s submission
appears to be an outline entitled “Introduction to Legal Methods and Process.” While interesting, the Panel cannot give
weight to the submission because its content is irrelevant to this dispute and
does not address the elements at issue here. A broad reading of the outline shows only
tangential relation to legal issues that might also affect arbitration
cases. Respondent does not include a
cover letter to explain Respondent’s intent or provide any extrinsic support
for what should be Respondent’s position in the dispute.
Complainant’s Failure to Show Authority to act
for LARAE, INC.
Complainant in this action is Lisa Larae Cline, who in the Complaint identifies herself as President, Pleasure
Boutique; however the applicant for the Registration of
the PLEASURE BOUTIQUE mark was LARAE, INC., which is not a party to this proceeding. Complainant did not produce any extrinsic
document or statement to establish Lisa Larae Cline’s relationship with LARAE,
INC., or her authority, if any, to act on behalf of LARAE, INC. The only extrinsic proof submitted by
Complainant was a xerox copy of the USPTO Registration for PLEASURE BOUTIQUE,
along with a Network Solutions page for the pleasureboutique.com website that
recites: “This site is under construction and coming soon.” The only information available to the Panel
shows that LARAE, INC., holds a registration for PLEASURE BOUTIQUE.
Although Complainant Lisa Larae Cline does not assert common law
rights in the PLEASURE BOUTIQUE mark, Complainant asserted rights in the
PLEASURE BOUTIQUE mark beginning March 31, 1998, the date listed on LARAE,
INC.’s United States Patent and Trademark Office (“USPTO”) trademark
registration as LARAE, INC.’s date of first use of the mark in commerce.
Were Complainant Lisa Larae
Cline properly identified as LARAE, INC., Complainant need only show a federal
trademark registration to establish rights in the mark and need only assert
March 31, 1998, as the date of first use in commerce in the USPTO filing to
establish secondary meaning in the mark pursuant to Policy ¶ 4(a)(i). See
SeekAmerica Networks Inc. v.
Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist); see also S.A.
Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13,
2003) (holding that the complainant established rights in the descriptive
RESTORATION GLASS mark through proof of secondary meaning associated with the
mark).
The disputed domain name contains LARAE, INC.’s mark in its entirety, eliminates the space between the two words of the mark and adds the generic top-level domain (“gTLD”) “.com.” The elimination of a space between words of a protected mark and the addition of a gTLD to an otherwise identical mark fail to sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
Respondent
did not substantively reply to Complainant’s allegations. The record shows that the disputed domain
name registration predates the date of LARAE, INC.’s trademark registration;
although the first use in commerce precedes registration of the domain
name. However, nothing before the Panel
confers rights in the PLEASURE BOUTIQUE mark registered to LARAE, INC., to
either Complainant or Respondent.
The Panel finds that Complainant failed to satisfy Policy ¶ 4(a)(i)
because Complainant does not show rights in the PLEASURE BOUTIQUE mark in
herself but produced a single document that tends to show rights in an entity,
LARAE, INC., that is not a party to this proceeding.
The Panel further finds that Respondent also failed to come forward with
a submission that would permit the Panel to find that Respondent has such
rights.
The
Panel finds that neither Complainant nor Respondent satisfied ICANN Policy ¶
4(a)(i). There
being a finding that neither party to this action established rights in the
mark contained within the disputed domain name, the Panel finds that it is not
necessary to address the final two elements.
Given the Ruling above, the Panel does not
address this element.
Registration and Use in Bad Faith:
Given
the Ruling above, the Panel does not address this element.
DECISION
Having failed to establish any one of the three elements required under
the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <pleasureboutique.com> domain name
NOT be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: April 29, 2007.
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