National Arbitration Forum

 

DECISION

 

Tiny Prints, Inc. v. Oceanside Capital Corp. c/o Web Admin

Claim Number: FA1007001337650

 

PARTIES

Complainant is Tiny Prints, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Oceanside Capital Corp. c/o Web Admin (“Respondent”), represented by Steven L. Rinehart, Utah, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tinyprint.com>, registered with NAME.COM LLC.

 

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.

 

David A. Einhorn appointed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2010.

 

On July 30, 2010, NAME.COM LLC confirmed by e-mail to the National Arbitration Forum that the <tinyprint.com> domain name is registered with NAME.COM LLC and that the Respondent is the current registrant of the name.  NAME.COM LLC has verified that Respondent is bound by the NAME.COM LLC 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 August 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 2010 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 postmaster@tinyprint.com by e-mail.  Also on August 4, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 24, 2010.

 

 

Complainant’s Additional Submission was received on August 30, 2010 in compliance with Supplemental Rule 7.

 

Respondent’s Additional Submission was received on September 7, 2010 in compliance with Supplemental Rule 7.

 

On September 3, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.

 

On September 16, 2010, Panelist issued an order requesting additional submissions.

 

Additional submissions were timely received from Complainant and Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

(1)     Respondent’s domain name <tinyprint.com> is confusingly similar to Complainant’s TINY PRINTS registered mark and Complainant’s TINY PRINTS common law rights.

(2)     Respondent does not have any rights or legitimate interests in this name.

(3)     The domain name was registered and is being used in bad faith.

 

[The Panel notes that this Complaint, prepared by Complainant’s representative, CitizenHawk, is so poorly drafted and difficult to read that the Panel found it necessary to study the exhibits and review online data to make sense of the allegations.  It should be noted that in another recent proceeding in which the complainant was represented by CitizenHawk, the Panel therein noted that it was “quite troubled” by the apparent carelessness with which the complaint in that proceeding was prepared.  Letstalk.com, Inc. v. Infofirma, Ltd. c/o Domain Administrator, FA 1310279 (Nat. Arb. Forum April 21, 2010).  This Panel echoes those sentiments].

 

B. Respondent

(1)     Complainant’s mark was registered four years after the domain name was registered.

(2)     Complainant’s intent-to-use trademark application was filed more than two years after Respondent registered its domain name.  In a subsequent filed amendment to allege use, Complainant alleged a first use date of May 26, 2004.

(3)     Respondent requests a finding of reverse domain name hijacking.

 

 

 

C. Additional Submissions

The additional submissions of Complainant and Respondent do not raise any additional issues relevant to the decision rendered herein.

 

FINDINGS AND 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 to the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Paragraph 15(e) of the Rules further provides for a finding of bad faith by the Complainant in appropriate cases:

 

If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

Because the Panel's conclusion as to the third element set forth in Paragraph 4(a) is dispositive of the present matter, the Panel declines to enter findings as to the other elements, and proceeds directly to the bad faith questions.

 

Registration and Use in Bad Faith

 

The Panel finds that Complainant failed to meet the burden of proof of bad faith registration under Policy ¶ 4(a)(3).  See Starwood Hotels & Resorts Worldwide, Inc. v.

Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(3)); 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 the respondent acted in bad faith).

 

The Panel further finds that Complainant has failed to prove that Respondent has engaged in any conduct that would constitute bad faith use pursuant to Policy ¶ 4(a)(3).  See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to

obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).

 

Complainant filed its trademark application on September 19, 2007, which was well after the June 13, 2005 date that Respondent registered its domain name.  Complainant asserts common law usage preceding said date of Respondent’s domain name registration.

 

By interlocutory order, this Panel requested that Complainant provide documentation and/or statements substantiating said alleged use of the TINY PRINTS mark prior to June 13, 2005.

 

In its response to such interlocutory order, Respondent did not provide evidence of any trademark usage whatsoever.  Specifically, Complainant provided the Panel only with an assignment of employment identification number (EIN) form and a 2004 tax return.  No trademark specimens, product descriptions, brochures, product photos or other evidence of usage was provided to the Panel.  Procuring assignment of an EIN and payment of taxes by a legal entity alone does not constitute use of a mark in commerce.

 

Since Respondent’s registration of the disputed domain name predates Complainant’s trademark rights in its TINY PRINTS marks, no bad faith can exist.  See Telecom Italia S.p.A. v. Net Gears LLC, FA 944807 (Nat. Arb. Forum Mary16, 2007).

 

Because Complainant has failed to establish the requirements of Policy ¶ 4(a)(3), it is not necessary for the Panel to consider the other two issues of the Policy (Identical and/or Confusingly Similar and Rights or Legitimate Interests).

 

Reverse Domain Name Hijacking

 

Mere lack of success of the Complaint is not itself sufficient to demonstrate that the Complaint was brought in bad faith.  See, e.g., Proto Software, Inc. v. Vertical Axis, Inc./PROTO.COM, D2006-0905 (WIPO Oct. 10, 2006).  However, such a finding may be appropriate where, as here, the disputed domain name predates Complainant’s trademark rights. Id.  This Panel provided Complainant with a second chance, by interlocutory order, to provide evidence of its alleged trademark usage upon which it based its claim of common law rights.  Even after this second chance, Complainant failed to provide any evidence of use of the mark whatsoever prior to Respondent’s registration of the domain name. 

 

Thus, Complainant and its representative, CitizenHawk, must have been aware, at the time the Complaint was filed, that there was no valid trademark usage by Complainant predating Respondent’s registration of the domain name.  It follows that this Complaint was brought in bad faith and that, accordingly, Complainant has attempted to engage in Reverse Domain Name Hijacking.

 

DECISION

Complainant, having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

The Panel also declares, on the issue of reverse domain name hijacking, that the Complaint has been brought in bad faith and as such is an abuse of the Policy.

 

 

David A. Einhorn, Panelist
Dated: October 8, 2010