Imagine Nation Books Ltd. v. LEE, LAWRENCE
Claim Number: FA1602001662128
Complainant is Imagine Nation Books Ltd. (“Complainant”), represented by Aaron Parsons, Colorado, USA. Respondent is Lawrence Lee (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <collectivegoods.com>, registered with Network Solutions, LLC.
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.
Hon. Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 22, 2016; the Forum received payment on February 22, 2016.
On February 23, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <collectivegoods.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 February 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 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 email@example.com. Also on February 26, 2016, 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 March 16, 2016.
On March 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Nelson A Diaz (ret.) 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.
Complainant alleges he has rights in the COLLECTIVE GOODS mark based on holding the trademark and offering goods and services under the mark. Respondent’s domain <collectivegoods.com> is identical to the COLLECTIVE GOODS mark in which Complainant asserts rights.
Respondent has no rights or legitimate interests in the domain as Respondent is not commonly known by the COLLECTIVE GOODS mark and the domain is used as a holding page.
Respondent attracts and confuses Complainant’s customers and does so for commercial gain.
Complainant has failed to show that it has protectable rights in the COLLECTIVE GOODS marks as the Complainant has only filed an application to register the mark.
Respondent has rights and legitimate interests in the <collectivegoods.com> domain name. Respondent created the domain name in July 26, 2000 with the intention of creating a website that would create an online clearinghouse for donations of surplus goods to nonprofit. Respondent has created business cards, a business proposal and financial model, and letterhead all relating to the <collectivegoods.com> domain name.
Complainant has not demonstrated Respondent’s bad faith registration or use of the disputed domain name in any manner.
Complainant has failed to meet ICANN Policy ¶ 4(a)(i).
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.
Respondent contends that Complainant has failed to meet its Policy ¶ 4(a)(i) burden because Complainant has not demonstrated any rights in the COLLECTIVE GOODS mark. Complainant’s only assertion of rights in the mark stem from a trademark application and the statement that Complainant offers “services and goods under the name Collective Goods.” See Compl., at 4. Panels have held that pending trademark applications do not establish rights in a mark under Policy ¶ 4(a)(i). See Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (“Complainant’s pending applications do not establish any enforceable rights until registration issues.”); see also ValueVapor LLC v. Vicki Oxman, FA 1542157 (Forum Mar. 20, 2014) (denying Complainant’s rights under Policy ¶ 4(a)(i) as “[t]here is no evidence of a registered trademark and it has long been held that a pending application for registration is not sufficient to prove trademark rights.”). This Panel finds that Complainant has failed to establish its rights in the COLLECTIVE GOODS mark through not registering the mark and failing to produce evidence that it conducted business using the mark.
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel 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 three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <collectivegoods.com> domain name REMAIN WITH Respondent.
Hon. Nelson A Diaz, Panelist
Dated: March 31, 2016
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