National Arbitration Forum
DECISION
Enki LLC v. Black Bayou LLC c/o Domain Administrator
Claim Number: FA0802001142379
PARTIES
Complainant is Enki LLC (“Complainant”), represented by Eric A. Novikoff, of
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <enki.com>, registered with eNom, 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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint
to the National Arbitration Forum electronically on
On February 5, 2008, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <enki.com> domain name is registered with eNom, Inc. and that the Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 February 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 6, 2008 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@enki.com by e-mail.
A timely Response was received and
determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <enki.com> domain name at issue is confusingly similar to Complainant’s ENKI mark.
2. Respondent does not have any rights or legitimate interests in the <enki.com> domain name.
3. Respondent registered and has used the <enki.com> domain name in bad faith.
B. Respondent
1. Respondent registered the domain name in question years before any claimed
use or registration rights in the ENKI mark on the part of Complainant.
2. Respondent has rights and legitimate interests in the domain name at issue.
3. Respondent did not register and has not used the domain name at issue in bad faith.
4. Complainant is guilty of “reverse domain name hijacking”.
FINDINGS
Complainant, Enki, LLC, contends that it has established rights in the ENKI mark by virtue of having filed an application for registration of the mark with the United States Patent and Trademark Office (“USPTO”) (App. No. 77101060 filed February 7, 2007). It is not alleged that the registration has issued and there is no evidence or even allegation by Complainant of a first date of use of ENKI to identify Complainant or otherwise prior to September 1, 2006. On the other hand, it appears that <enki.com> was first registered on May 13, 1996, more than ten years prior to any use of the ENKI mark claimed by the Respondent. Respondent is the current registered owner (since 2003) of this domain name at issue. Complainant does not allege that it has common law trademark rights in the ENKI mark and has provided no evidence which could be construed to support such an assertion if made.
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.
Identical and/or Confusingly Similar
Respondent has provided proof that it purchased the domain name at issue from a registrant in 2003, well before Complainant’s claimed date of first use (Sept. 1, 2006). Complainant lacks rights to the ENKI mark sufficient to satisfy Policy ¶ 4(a)(i). See Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that the complainant may have in its common law mark did not predate the respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied); see also Trujillo v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have not shown that their rights pre-date Registrant's domain name, Complainants have not satisfied paragraph 4(a)(i) of the Policy.”).
Complainant’s trademark registration application confers no rights in the mark. See Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s pending trademark applications did not establish rights because “an application for [a] mark is not per se sufficient to establish rights [in] a trademark for the purposes of the [Policy]”); see also ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Complainant’s mere application to the USPTO to register the ECG mark is insufficient to establish rights to the mark.”).
Accordingly, the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i). Complainant, having failed in this critical respect, it is not necessary for the Panel to address the remaining two elements of the Policy.
Reverse Domain Name Hijacking
Respondent has urged the Panel to
find that Complainant has engaged in everse domain name hijacking by submitting
a Complaint, which Complainant knew or should have known was devoid of
merit. Respondent contends Complainant
knew or in the exercise of even slight effort should have known that
<enki.com> had been registered several years prior to Complainant’s first
claimed use of the ENKI mark. The Panel
agrees. See Aspen Grove, Inc. v. Aspen
Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that when the complainant knows
it has no rights in the mark but brings a complaint despite this fact, the
complainant has acted in bad faith and attempted Reverse Domain Name Hijacking
which constitutes an abuse of the administrative proceeding); see also Vortal
Group, Inc. v. Digital Transp., FA 222968 (Nat. Arb. Forum Mar. 9, 2004) (“The
claim for reverse domain name hijacking is granted, because filing a Complaint
which one knows or should have known would fail based upon the admissions of
Complainant can be interpreted as harassing per se and should be
discouraged.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA
250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in
reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed
domain name in spite of its knowledge that the complainant was not entitled to
that name and hence had no colorable claim under the Policy”). This is a frivolous proceeding which should
never have been filed by Complainant.
Accordingly, the Panel finds that Complainant is guilty of Reverse Domain Name Hijacking in accordance with Policy ¶ 15(e).
DECISION
Having failed to establish the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
James A. Carmody,
Esq., Panelist
Dated: March 28, 2008
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