O.C. Seacrets, Inc. v. Southern TradeWINs, Inc.
Claim Number: FA0409000328042
Complainant is O.C. Seacrets, Inc. (“Complainant”), represented by Steven D. Lustig, 1615 L. St. NW, Suite 850, Washington, DC 20036. Respondent is Southern TradeWINs, Inc. (“Respondent”), 16537 NW 7th St., Suite G01, Pembroke Pines, Florida 33028.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jamaicausa.com>, registered with Go Daddy Software, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 14, 2004; the Forum received a hard copy of the Complaint on September 15, 2004.
On September 15, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <jamaicausa.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 September 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 6, 2004 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jamaicausa.com> domain name is identical to Complainant’s JAMAICA USA mark.
2. Respondent does not have any rights or legitimate interests in the <jamaicausa.com> domain name.
3. Respondent registered and used the <jamaicausa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, O.C. Seacrets, Inc., is in the restaurant and bar services business.
Complainant owns a registration with the United States Patent and Trademark Office for its JAMAICA USA mark (Reg. No. 2,057,555 issued Apr. 29, 1997). Complainant listed its first use of the mark in commerce as May 1990. Complainant uses this mark in association with its restaurant and bar services and apparel.
Respondent registered the <jamaicausa.com> domain name on November 14, 2002. Complainant provides no evidence as to the use of the disputed domain name.
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."
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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 established in this proceeding that it has rights in the JAMAICA USA mark through registration with the United States Patent and Trademark Office and continuous use of its mark in commerce since at least 1990. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
The <jamaicausa.com> domain name registered by Respondent is identical to Complainant’s JAMAICA USA mark because the domain name incorporates Complainant’s mark in its entirety, deviating only by the elimination of a space and the generic top-level domain (gTLD) “.com.” The Panel finds that the omission of a space from and the addition of a gTLD to a registered mark are irrelevant to and do not negate the identical nature of the domain name. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), aff’d 152 F.3d 920 (2d Cir. 1998), cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical). The Panel further concludes that this is sufficient to prove this element. See Shirmax Retail Ltd. v. CES Mktg. Group Inc., AF-0104 (eResolution Mar. 20, 2000) (refusing to interpret Policy 4(a)(i) in the conjunctive rather than disjunctive sense in holding that "mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever").
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent has no rights or legitimate interests in the <jamaicausa.com> domain name that contains Complainant’s JAMAICA USA mark in its entirety. Due to Respondent’s failure to respond to the Complaint, the Panel assumed that Respondent lacks rights and legitimate interests in the disputed domain name. In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with Respondent to demonstrate that it has rights or legitimate interests).
However, Complainant has provided no evidence as to the use of the <jamaicausa.com> domain name and has merely asserted that Respondent has no rights or legitimate interests, which is not sufficient to support a finding that Respondent lacks rights or legitimate interests. See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when Respondent does file a Response, Complainant must allege facts, which if true, would establish that Respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by Complainant that establish Respondent lacks rights or legitimate interests in the disputed domain name, the Panel may decline to transfer the disputed domain name); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent's default does not automatically lead to a ruling for Complainant).
Thus, the Panel finds that Policy ¶ 4(a)(ii) has not been satisfied.
Complainant made general allegations that Respondent registered and used the <jamaicausa.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). However, Complainant provided no factual evidence to support its allegations. Thus, there is no factual basis to allow the Panel to find bad faith registration and use. See PRL USA Holdings, Inc. v. Polo, D2002-0148 (WIPO April 29, 2002) (finding that because Complainant failed to provide any factual allegations as to the nature of use of the disputed domain name, Complainant failed to prove that Respondent’s domain names were being used in bad faith); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the Panel may conclude that Respondent acted in bad faith); see also White Pine Software, Inc. v. Desktop Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000) (declining to transfer the domain name where a full factual record has not been presented to the Panel such that a conclusive determination can be made regarding the parties’ respective claims to the contested domain name).
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
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 <jamaicausa.com> domain name be REMAIN WITH Respondent.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 29, 2004
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