Philip Posa v. Sajay Marni
Claim Number: FA0604000676306
PARTIES
Complainant is Philip Posa (“Complainant”),
represented by Philip Posa, of Pelle & Pelle, Esqs., 5240 Merrick Road, Massapequa, NY 11758. Respondent is Sajay Marni (“Respondent”), represented by Randall M. Whitmeyer, of Hutchison Law Group PLLC5410 Trinity
Road, Suite 400, Raleigh, NC 27607.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mybeauty.com>,
registered with Aaaq.com.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 7, 2006; the National Arbitration Forum received a hard
copy of the Complaint on April 12, 2006.
On April 7, 2006, Aaaq.com confirmed by e-mail to the National
Arbitration Forum that the <mybeauty.com>
domain name is registered with Aaaq.com and that the Respondent is the current
registrant of the name. Aaaq.com has
verified that Respondent is bound by the Aaaq.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 April 14, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 4, 2006 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@mybeauty.com by e-mail.
A timely Response was received and determined to be complete on May 4,
2006.
Both parties filed additional submissions and were considered by the
Panel.
On May 9, 2006, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Complainant
alleges that he has rights and legitimate interests with respect to the
MyBeauty trademark and that the <mybeauty.com> domain name at
issue is identical to or confusingly similar to Complainant’s MyBeauty mark
which was first allegedly used in 1998.
2.
Complainant alleges that Respondent has no rights or legitimate
interests in respect to the MyBeauty mark or the domain name at issue.
3.
Complainant finally alleges that Respondent registered and has used the
domain name at issue in bad faith.
B. Respondent
1.
Respondent
asserts that Complainant has failed to prove that he has rights or legitimate
interests in the MyBeauty trademark or any registration of said mark. Further, Respondent says that the owner of
the trademark registration with the USPTO, Mybeautycenter.com, LLC, only began
using the MyBeauty mark shortly before or after Respondent registered the
domain name at issue in January of 2004, not in 1998 as Complainant alleges.
2. Respondent claims that he acquired the domain
name at issue from a third party on January 19, 2004 in a good faith
transaction without knowledge of the trademark registration of the MyBeauty the
prior month. Respondent believes that
the mark is generic and has acquired several other domain names containing
generic terms for development in the future.
Accordingly, Respondent claims rights and legitimate interests in
respect to the domain name at issue.
3. Respondent denies that it registered and has
used the domain name at issue in bad faith.
C. Additional Submissions
Both parties filed Additional Submissions which essentially underscored their respective best arguments and both were taken into consideration in rendering this Decision.
Although
Complainant alleges that the MYBEAUTY trademark has been owned by Complainant
since 1998, there is absolutely no evidence whatsoever to support that fact in
the name of the Complainant. In other
words, there is no evidence of a common law trademark through long time use by
the Complainant or by anyone. Further,
as pointed out by the Respondent, the registration of the MYBEAUTY trademark
with the U.S. Patent and Trademark Office reflects the owner of the mark to be
Mybeautycenter.com, with no assignment to the Complainant (Reg. No.
2798442). The Complainant attempts,
without any support whatsoever, to remedy this defect in its additional
submission with this language:
Complainant was a member of MyBeautyCenter.com, LLC registered owner of trademark registration of the word mark: MYBEAUTY, filed 5/25/01 and registered on 12/23/03. Goods and Services: Computerized on-line retail store services in the field of cosmetics, beauty tools, nail care products etc. (Emphasis supplied).
Even with a second bite at the apple, the Complainant has failed to afford this panel with any evidence that he, in fact, has rights and legitimate interests with respect to the MyBeauty trademark. Having twice failed to supply proof of rights or legitimate interests in the mark, it is not necessary to find whether such defects or questions can be cured in an additional submission. It is not necessary to find whether or not Mybeautycenter.com, LLC, had it been a party to this proceeding, might have prevailed. It is also not necessary to make findings with respect to the remaining two elements of the Policy in this proceeding. The Complainant has shown no standing whatsoever to bring this proceeding.
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.
Complainant is not the owner of any rights in the USPTO registered MYBEAUTY mark based on the stated registrant information provided in the USPTO trademark record. Complainant lacks rights in the MYBEAUTY mark and the claim should be dismissed as a result. See NBA Props., Inc. v. Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000) (denying complaint because the complainant was not the owner of the KNICKS trademarks); See also Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (finding that “serious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim” and “[t]he ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal”).
The Panel finds that Policy ¶ 4(a)(i) has not been satisfied.
The Panel finds that it is not necessary to determine whether Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that it is not necessary to determine whether Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mybeauty.com>
domain name NOT be TRANSFERRED from
Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 23, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum