Swift Unlocks, Inc. v. Cellular King.com. Inc. d/b/a Instantunlock.com
Claim Number: FA1306001505708
Complainant is Swift Unlocks, Inc. (“Complainant”), represented by Christina S. Loza of Loza & Loza, LLP, California, USA. Respondent is Cellular King.com. Inc. d/b/a Instantunlock.com (“Respondent”), represented by Peter E. Nussbaum of Wolff & Samson PC, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <unlockfusion.com> and <swiftunlock.com>, registered with Omnis Network, LLC, and GoDaddy.com, LLC.
The undersigned certifies that he and the panel has acted independently and impartially and to the best of his knowledge we have no known conflict in serving as Panelists in this proceeding.
Hon. Daniel B. Banks, Jr. (Ret.) as Panel Chair
Hon. Karl Fink (Ret.), as Panelist
Jonas Gulliksson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2013; the National Arbitration Forum received payment on June 19, 2013.
On June 21, 2013 and June 27, 2013, Omnis Network, LLC, and GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <unlockfusion.com> and <swiftunlock.com> domain names are registered with Omnis Network, LLC, and GoDaddy.com, LLC and that Respondent is the current registrant of the names. Omnis Network, LLC, and GoDaddy.com, LLC has verified that Respondent is bound by the Omnis Network, LLC, and GoDaddy.com, LLC registration agreements 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 July 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2013 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 firstname.lastname@example.org, email@example.com. Also on July 2, 2013, 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 August 1, 2013.
On August 6, 2013, an Additional Submission was filed by Complainant and deemed to be compliant.
On August 9, 2013, an Additional Submission was filed by Respondent and deemed to be compliant.
On August 13, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., Hon. Karl Fink and Jonas Gulliksson as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 names be transferred from Respondent to Complainant.
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity of Domain Names
Policy ¶ 4(a)(ii): Respondent Lacks Rights and Legitimate Interests
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use and Registration
Respondent registered the domain names:
Policy ¶ 4(a)(i): Complainant Lacks Rights
Policy ¶ 4(a)(ii): Respondent’s Rights and Legitimate Interests
Policy ¶ 4(a)(iii): No Need to Analyze Bad Faith
Preliminary Issue: Identity of Respondent
Cellular King.com. Inc. d/b/a Instantunlock.com (“Responding Party”) claims that it had acquired the <swiftunlock.com> domain name from listed Respondent “Onyx Co.” in 2012, but the WHOIS information was under a privacy protection service that did not update the registrant information until after Complainant’s inquiry. Responding Party also claims that listed Respondent “S. Zack” is one of Responding Party’s principals. The Panel infers that Responding Party is the recorded owner of the domain names and elects to alter the case caption to reflect the fact that “Cellular King.com. Inc. d/b/a Instantunlock.com” is the Respondent in this case. See Rhodia v. Paperboy & Co., D2006-0851 (WIPO Sept. 8, 2006) (finding that the person or entity listed as the domain name registrant on the disputed domain name’s WHOIS record is the proper respondent in claims regarding that domain name).
The Panel finds that Complainant does not have registered trademark rights in the disputed domain names and that Complainant has failed to demonstrate valid common law rights that predate the registration of the disputed domain names.
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.
Complainant has failed to demonstrate valid service mark rights in its alleged marks. It has provided no evidence through either the Complaint or Complainant's Additional Submission that would support its claim that it owns protectable service mark rights in either of its alleged marks.
Neither of Complainant's purported marks are the subject of a service mark registration. Where no registration exists, it is well settled that Complainant must demonstrate valid common law rights that predate the registration of the domain names in order to prevail. The evidence presented does not demonstrate that the Complainant has valid common law rights in the disputed domain names. See e.g. New Jersey Turnpike Authority v. On-Site (GARDENSTATEPARKWAY-DOM), et. al., FA 1305001 (denying claim where common law rights were not firmly established notwithstanding decades of prior use of the marks in issue); GoodTherapy.org, LLC v. George Washere, FA1504037 (Nat. Arb. Forum July 12, 2013)(denying claim where complainant failed to demonstrate sufficient evidence of common law rights and/or distinctiveness in the alleged mark in the period between its purported first use and the date of registration of the domain name); Artistic Pursuit LLC v. calcuttawebdevelopers.com FA 894477 (Nat. Arb. Forum Mar.8, 2007)(holding that although a trademark registration is not required, a complainant must firmly establish common law rights in its mark).
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), and therefore declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <unlockfusion.com> and <swiftunlock.com> domain names remain with Respondent.
Hon. Daniel B. Banks, Jr. (Ret.), Panel Chair
Hon. Karl Fink (Ret.), Panelist
Jonas Gulliksson, Panelist
Dated: August 26, 2013
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