Robert Pagliarini v. Wazir Shah
Claim Number: FA1512001653333
Complainant is Robert Pagliarini (“Complainant”), California. Respondent is Wazir Shah (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <other8hours.com>, registered with TLD Registrar Solutions Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 21, 2015; the Forum received payment on December 21, 2015.
On December 22, 2015, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <other8hours.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 December 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2016 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@other8hours.com. Also on December 22, 2015, 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 December 22, 2015.
On December 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant owns the OTHER 8 HOURS (sic) mark via its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,596,197, registered Mar. 24, 2009). Am. Compl., at Attached Annex.
2. This registration lapsed on October 30, 2015. Complainant is in the process of having the trademark reinstated.
3. Complainant was also previously the registrant of the <other8hours.com> domain name, but the person responsible for Complainant’s domain names did not renew its registration.
4. Respondent’s <other8hours.com> is identical or confusingly similar to the OTHER 8 HOURS (sic) mark.
5. Respondent has no rights or legitimate interests in the <other8hours.com> domain name. Respondent is not commonly known by the <other8hours.com> domain name per the WHOIS information. Rather than using the <other8hours.com> with a bona fide offering of goods or services, or for any legitimate noncommercial or fair use, Respondent impersonates Complainant by discussing a book authored by Complainant and purporting to offer it via the disputed domain name for free.
6. Respondent registered and used the disputed <other8hours.com> domain name in bad faith. Respondent impersonated Complainant through the <other8hours.com> domain name.
B. Respondent
Respondent made the following contentions.
1. Complainant has no rights in respect of the THE OTHER 8 HOURS mark.
2. Complainant gave incorrect information to the Panel when it omitted the “THE” when asserting rights in the “OTHER 8 HOURS” mark.
3. Respondent bought the disputed domain name at an online public auction.
4. Complainant has no right to the disputed domain name.
1. Complainant was the owner of the registered trademark for the THE OTHER 8 HOURS via its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,596,197, registered Mar. 24, 2009). This registration was cancelled on October 30, 2015.
2. Complainant has not shown that he has rights in a trademark or service mark.
3. Complainant is therefore unable to prove all of the three elements required to be proved under paragraph 4(a) of the Policy and the Complaint must consequently be denied.
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:
(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.
The first question that arises is whether Complainant has rights in a trade or service mark on which it can rely. Complainant’s case in that regard is that it used to own a trademark, namely the OTHER 8 HOURS (sic) mark via its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,596,197, registered Mar. 24, 2009). Complainant is incorrect in that submission as the trademark in which Complainant had rights through the above registration was not OTHER 8 HOURS, but THE OTHER 8 HOURS. In any event, paragraph 4(a)(i) the Policy requires that Complainant shows, not that it used to have rights in a trade or service mark, but that it “has” such rights, meaning that it currently has such rights. It is clear on the evidence that Complainant’s registration of the THE OTHER 8 HOURS mark was cancelled on October 30, 2015 and consequently Complainant does not have rights in that mark.
Complainant maintains that he is in the process of having the trademark registration reinstated, but offers no evidence of the process being undertaken.
Complainant has not submitted or tried to prove that he has rights in any other registered trade or service mark.
It is of course sufficient in UDRP proceedings for a complainant to show that it has an unregistered or common law trademark and that proposition is plainly correct on the wording of the Policy. However, Complainant has not submitted or tried to prove that he has an unregistered or common law trade or service mark.
Complainant is thus unable to establish the first of the three elements required to be proved under paragraph 4(a)(i) of the Policy.
As Complainant is obliged to prove all three of those elements and is unable to do so, the Complaint cannot proceed and the relief sought must be denied.
It is neither necessary nor appropriate for the Panel to make any comment or finding on the other two elements relating to rights and legitimate interests and registration and use in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <other8hours.com> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 1, 2016
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