national arbitration forum

 

DECISION

 

William (Bill) Robert Johnson (Sole Director) / Aahara Enterprises Pty Ltd v. Pieter’s

Claim Number: FA1201001423269

 

PARTIES

Complainant is William (Bill) Robert Johnson (Sole Director) / Aahara Enterprises Pty Ltd (“Complainant”), Australia.  Respondent is Pieter's (“Respondent”), Japan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ahara.com>, registered with Tucows, 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.

 

Michael A. Albert as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2012; the National Arbitration Forum received payment on January 7, 2012.

 

On January 9, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <ahara.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 10, 2012, Complainant submitted an Amended Complaint.  That same day, the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ahara.com.  Also on January 10, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on January 30, 2012.

 

On February 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

 

 

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant alleges that the domain name <ahara.com> is confusingly similar to the Complainant’s service mark AAHARA ENTERPRISES PTY LTD, for which Complainant registered the domain name <aahara.com> on October 3, 2011.  According to Complainant, Aahara Enterprises Pty. Ltd. is a new company involved in yoga instruction, fitness classes, and personal trainer services.  Complainant submits Australian company registration and business registration certificates evidencing Aahara Enterprise Pty. Ltd.’s December 1, 2011 registrations.

 

Complainant asserts that Respondent does not have a service mark related to <ahara.com> and has not offered goods and services using that domain name.  Complainant further asserts that Respondent has registered the domain name primarily for the purpose of selling it.  Complainant submits web page printouts reflecting a bidding process for the <ahara.com> domain name in which Complainant and Respondent allegedly participated. 

 

B. Respondent

 

Respondent Pieter’s, through its administrative and technical contact Susumu Hara, contends that the domain name <ahara.com> represents Susumu Hara’s family and also represents Susumu Hara’s sister, Asuka Hara.  Respondent appends to its Response Susumu Hara’s passport, which reflects Susumu’s “Hara” surname. 

 

Susumu Hara asserts that he purchased the <ahara.com> domain name approximately ten years ago, that he previously used the domain name for a family website, and that even though he is willing to accept bids for the domain name, he intends to use the domain name again for personal and family purposes.

 

FINDINGS

The Panel finds that:

 

-       Complainant has failed to establish rights in the AAHARA ENTERPRISES PTY LTD mark under Policy ¶4(a)(i).

 

-       Because Complainant fails to establish rights in the AAHARA ENTERPRISES PTY LTD mark, the Panel need not determine whether the <ahara.com> domain name is identical or confusingly similar to that mark, whether Respondent has rights or legitimate interests in the <ahara.com> domain name, and/or whether Respondent registered or uses the <ahara.com> domain name in bad faith.

 

DISCUSSION

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."

 

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:

 

              i.        the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

             ii.        Respondent has no rights or legitimate interests in respect of the domain name; and

            iii.        the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

The Panel must first determine whether Complainant has trademark or service mark rights in the AAHARA ENTERPRISES PTY LTD mark.

 

The AAHARA ENTERPRISES PTY LTD mark is not a registered trademark or service mark, and Complainant’s only submissions allegedly demonstrating rights in the AAHARA ENTERPRISES PTY LTD mark are (1) Aahara Enterprises Pty. Ltd.’s corporate registrations, which reveal that Aahara Enterprises Pty. Ltd. was registered less than three months ago; and (2) Complainant’s October 3, 2011 registration of the domain name <aahara.com>, which, notably, postdates Respondent’s registration of the <ahara.com> domain name by almost ten years.  This evidence fails to demonstrate that the AAHARA ENTERPRISES PTY LTD mark has acquired a secondary meaning through continuous and ongoing public use, and, therefore, Complainant has not sustained its burden to prove that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.  See Compare Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (finding that the Complainant failed to carry its burden of proof under Policy ¶ 4(a)(i), noting that a “‘complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services,’” and “‘Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.’”) (quoting the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 1.7 What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership);  see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).  

 

Having found that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel need not continue its analysis.  See Hugo Daniel Barbaca Bejinha, FA 836538 (“[I]n view of the fact that the Complainant has failed to satisfy the requirements of the Policy with respect to Subparagraph 4(a)(i), this Panel need not opine on whether the Respondent has rights or legitimate interests in the disputed domain name, or whether that name was registered and is being used in bad faith.”).

 

DECISION

The Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <ahara.com> domain name REMAIN WITH Respondent.

 

Michael A. Albert, Panelist

Dated:  February 15, 2012

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page