Mycrib, Inc. v. KB c/o
Katarzyna Bieniek
Claim Number: FA0806001211136
PARTIES
Complainant is Mycrib, Inc. (“Complainant”), represented by Brian
A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mycrib.com>, registered with Computer
Services Langenbach Gmbh d/b/a Joker.com.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically
on June 20, 2008; the National
Arbitration Forum received a hard copy of the Complaint on June 20, 2008.
On July 1, 2008, Computer Services Langenbach Gmbh d/b/a Joker.com
confirmed by e-mail to the National Arbitration Forum that the <mycrib.com>
domain name is registered with Computer Services
Langenbach Gmbh d/b/a Joker.com and that the Respondent is the current
registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com
has verified that Respondent is bound by the Computer
Services Langenbach Gmbh d/b/a Joker.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 July 3, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 23, 2008 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@mycrib.com by e-mail.
A timely Response was received and determined to be complete on July 23, 2008.
An Additional Submission was received from Complainant on July 29, 2008
without the required fee; therefore the National Arbitration Forum does not
consider it to be in compliance with the National Arbitration Forum’s
Supplemental Rule 7.
Because the National Arbitration Forum determined that the Additional
Submission did not comply with Rule 7, it was not considered by the Panel in
making its decision.
On July 31, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Louis E. Condon, Diane Cabell, and Bruce E. Meyerson
as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Rights in the MYCRIB mark (Reg. No. 3,208,096 issued February 13, 2007,
filed February 9, 2006), which was registered with the United States Patent and
Trademark Office (“USPTO”). Complainant
also claims that, though the disputed <mycrib.com>
domain name was initially registered in 2001, the instant Respondent did not
acquire the disputed domain name until September 8, 2007. Its business at its <mycrib.net> domain
name consists of a social networking website, which commenced in early
2006. Complainant submits evidence
demonstrating that it has received 67,000 unique visitors worldwide, and that
its domain name and corresponding website is ranked as one of the top 35,000
websites. Complainant argues that it has
expended resources to build its goodwill, and that it has 70,000 members using
its networking operation. That the <mycrib.com> domain name is
identical to its MYCRIB mark, regardless of the fact that the disputed domain
name adds the generic top-level domain (“gTLD”) “.com.”
B. Respondent
Complainant has only a “design plus mark,” meaning that Complainant
does not have rights in the text of the mark alone.
C. Additional Submissions
Did not comply with Rule 7 and therefore, not considered by the Panel.
FINDINGS
A majority of the panelists find that the
elements of Complainant’s design mark sufficiently distinguish it from the
underlying text such that the domain is not identical or confusingly
similar. Even if one accepts that
Complainant may have established common law rights in the text, Complainant has
not established evidence of worldwide fame at the time of the current
registration of the domain name such as to cause the Respondent, who resides in
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.
Since the Complainant failed to establish one
of the three key elements under ICANN rules and policy, it is not necessary for
the Panel to consider or rule on the other elements.
DECISION
Complainant not having established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be DENIED.
Louis E. Condon, Panelist
Dated: August 25, 2008
Diane Cabell, Panelist
Dated: August 25, 2008
I respectfully disagree with my
colleagues. I would hold that the
Complainant has established that the domain name is confusing similar to its
mark because unlike decisions relied upon by the Respondent, in this case, the
USPTO registration does not limit Complainant's use of the terms "my
crib" to the context of the stylized mark itself. Although Complainant allowed its ownership of
the domain name to lapse at one point, the rights in its mark precede the
current registration of the domain name by Respondent. Finally, although link sites are indeed
legitimate uses, here the Respondent's site offers services in apparent direct
competition with those offered by Complainant.
I would order that the domain name be
transferred.
Bruce E. Meyerson, Panelist
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