Grant Street Group, Inc. v.
RealAuction.com
Claim Number: FA0412000385809
PARTIES
Complainant
is Grant Street Group, Inc. (“Complainant”),
represented by Paul S. Chirgott, 429 Forbes Avenue, Suite 1800,
Pittsburgh, PA 15219. Respondent is RealAuction.com (“Respondent”),
represented by Teresa Ragatz, of Isicoff Ragatz & Koenigsberg, P.L., 1101 Brickell Avenue, Suite 800 South Tower, Miami, FL 33131.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <realauction.com>,
registered with Network Solutions, Inc.
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.
Bruce
Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
20, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 20, 2004.
On
December 21, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <realauction.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
December 22, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 11, 2005 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@realauction.com by e-mail.
A
timely Response was received and determined to be complete on January 11, 2005.
Complainant
has submitted an Additional Submission which was received in a timely manner according to the National
Arbitration Forum Supplemental Rule No.7.
On January 17, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Bruce Meyerson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
asserts that it has been in the business, among other things, of developing,
servicing and hosting Internet-based auction platforms since 1997. One of the business activities engaged in by
Complainant pertains to the advertising and auctioning of delinquent tax
certificates. Complainant contends that
beginning in October 2003, it began using the REALAUCTION mark in connection
with this aspect of its business. The
mark was first registered in the State of Florida on October 21, 2004. Complainant contends that Respondent
initially began doing business in Florida under the name of “Internet Auction
Solutions, LLC” and subsequently changed its name to “RealAuction.com, LLC.”
Complainant
contends the Respondent knew of its “rights” in the REALAUCTION mark five months
before it began using the disputed domain name. Complainant states that at the time it filed the Complaint, no
services were offered on Respondent’s website.
Complainant argues that Respondent’s activities demonstrate that its
purpose is to compete directly with Complainant’s business and to attract
customers for commercial gain, by creating a likelihood of confusion with
Complainant’s mark.
B.
Respondent
According
to Respondent, as the result of a change in Florida law in 2004, Respondent
became involved in conducting tax certificate sales via the Internet. On October 6, 2004, Respondent changed its
name from Internet Auction Solutions to RealAuction.com. Respondent changed its name because, among
other things, earlier that year it purchased the disputed domain name from a
third party.
Respondent
contends that before it received notice of the any dispute with Complainant, it
made use of the domain name at issue through a bona fide offering of
services. Respondent contends that it
is not using the domain name in bad faith and that when it purchased the domain
name, there was “no sign of RealAuction” or “RealAuction.com” on Complainant’s
website, that Complainant owned no trademark registrations for the REALAUCTION
or REALAUCTION.COM marks and finally that Complainant had no pending trademark
applications for the REALAUCTION or REALAUCTION.COM marks.
C.
Additional Submissions
In
its Additional Submission, Complainant contends, among other things, that its
first use of the REALAUCTION and REALAUCTION.COM occurred in 2003 before
Respondent purchased the domain name at issue.
Moreover, Complainant contends that it started using the REALAUCTION
trademark on its website in April 2004.
FINDINGS
Respondent acquired the domain name on
September 21, 2004. On October 6,
2004, Respondent filed with the Florida Department of State its amended
articles of incorporation wherein it changed its name to RealAuction.com. Complainant registered its mark with the
State of Florida on October 21, 2004.
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.
Three elements must be proven by a
successful complainant in these proceedings.
If a complainant is unsuccessful with respect to any one element, the
complainant must fail.
Here, Complainant cannot prove bad faith
registration of the disputed domain name because Complainant did not establish
rights in the REALAUCTION mark until, at the earliest, Oct. 21, 2004, after
Respondent acquired the domain name.
It
is Complainant’s contention that Respondent has registered and used the domain
name in “bad faith” because, according to Complainant, Respondent violated
Policy 4(b)(iv) (attracting Internet users to its site by creating a likelihood
of confusion with Complainant’s mark).
But under this, or any theory of bad faith, it is necessary for
Complainant to have established rights in the identical or similar mark before
the registration of the domain name at issue.
See, e.g., Ode v. Intership Ltd., D2001-0074 (WIPO
May 1, 2001) (“We are of the unanimous view
that the trademark must predate the domain name.”); see also Robert A.
Badgley, Domain Name Disputes § 8.03 (2002) (“It should go without
saying that an ICANN respondent could not have registered his domain name in
‘bad faith’ if, at the time of such registration, there was no identical or
similar trademark out there.”)
Here
the record reflects that the domain name at issue had been owned by a third
party, and acquired by Respondent on September 21, 2004.[1] Two weeks later, on October 6, 2004,
Respondent filed with the Florida Department of State its amended articles of
incorporation wherein it changed its name to RealAuction.com. Complainant registered its mark with the
State of Florida on October 21, 2004.
As of the date that Respondent acquired the domain name, Complainant had
not registered its mark.[2] Accordingly, prior to the time that
Respondent acquired ownership of the domain name, Complainant had not
established “rights” in a mark similar or identical to the domain name.
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Bruce Meyerson, Panelist
Dated: February 7, 2005
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