Encore Draperies Inc. v. Samantha Encore / EncoreDraperies.com
Claim Number: FA1201001426827
Complainant is Encore Draperies Inc. (“Complainant”), represented by Jonathan J. Sommer of Sommer's Business Law Firm, Canada. Respondent is Samantha Encore / EncoreDraperies.com (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <encoredraperies.com>, registered with New Dream Network, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2012; the National Arbitration Forum received payment on January 27, 2012.
On January 30, 2012, New Dream Network, LLC confirmed by e-mail to the National Arbitration Forum that the <encoredraperies.com> domain name is registered with New Dream Network,, LLC and that Respondent is the current registrant of the name. New Dream Network,, LLC has verified that Respondent is bound by the New Dream Network,, 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 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2012 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@encoredraperies.com. Also on February 3, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 <encoredraperies.com> domain name is confusingly similar to Complainant’s ENCORE DRAPERIES mark.
2. Respondent does not have any rights or legitimate interests in the <encoredraperies.com> domain name.
3. Respondent registered and used the <encoredraperies.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Encore Draperies Inc., operates under its ENCORE DRAPERIES mark. Complainant sells and installs window draperies under its mark. Complainant operates throughout Canada and the north-eastern part of the United States.
Respondent, Samantha Encore / EncoreDraperies.com, registered the on May 4, 2002. Respondent’s <encoredraperies.com> domain name resolves to a website that allows Internet users to request information about Respondent.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 does not hold a trademark registration with a national trademark authority for its ENCORE DRAPERIES mark. However, past panels found that trademark registrations are not the only way a complainant may demonstrate rights in a mark and that a complainant may own rights in a mark if the complainant can demonstrate common law rights. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant argues that it began using its ENCORE DRAPERIES mark as its business name in 1999 in connection with the sale and installation of window draperies. Complainant asserts that it offers its products and services throughout Canada and the north-eastern part of the United States. Complainant also alleges that it owns the <encoredraperiesinc.com> domain name that it uses for its official website. Complainant provides the Panel with a copy of its official website that supports its allegation that it sells and installs draperies. Past panels have held that a complainant may establish common law rights in a mark by showing that the mark acquired secondary meaning through continuous and extensive use. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years). In this case, the Panel determines that Complainant did not provide sufficient evidence that its mark acquired secondary meaning because Complainant did not present any evidence that would support Complainant’s claims of use of the mark since 1999. Complainant did not provide the Panel with evidence of significant sales under the ENCORE DRAPERIES mark, customer association with Complainant and the mark, or the extent of Complainant’s use of the ENCORE DRAPERIES mark. Therefore, the Panel finds it impossible to determine if Complainant’s ENCORE DRAPERIES mark acquired sufficient secondary meaning for a finding that Complainant owns common law rights in the mark. In light of this lack of evidence, the Panel finds that Complainant does not own rights in its ENCORE DRAPERIES mark for the purposes of Policy ¶ 4(a)(i). See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark).
The Panel finds Policy ¶ 4(a)(i) is not satisfied.
After finding that Complainant did not satisfy Policy ¶ 4(a)(i), the Panel is not required to continue its analysis under the Policy. However, the Panel determines that its discussion of Policy ¶ 4(a)(ii) will further support its decision to deny the Complaint. Under Policy ¶ 4(a)(i), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). In this case, Complainant fails to make a prima facie case. Complainant asserts that Respondent is a competitor of Complainant and that Respondent uses the disputed domain name to compete with, and disrupt, Complainant’s business. However, the Panel finds that the screenshot of the resolving website shows a website that allows Internet users to request more information but does not include any information about draperies or a competing drapery business. Furthermore, while Complainant alleges that Respondent is a competitor of Complainant’s operating in the same city of Complainant, Complainant does not provide any evidence of such a fact and, in fact, alleges that the Whois record indicates a deceased person in Texas as the domain name owner. Based on Complainant’s failure to make a prima facie case, the Panel concludes that Complainant failed to prove that Respondent lacks rights and legitimate interests in the <encoredraperies.com> domain name under Policy ¶ 4(a)(ii). See 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 the complainant that establish the 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) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).
The Panel finds Policy ¶ 4(a)(ii) is not satisfied.
In light of the Panel’s findings under Policy ¶ 4(a)(i) and (ii), the Panel chooses to forego its analysis under Policy ¶ 4(a)(iii). 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 VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.
Accordingly, it is Ordered that the <encoredraperies.com> domain name REMAIN WITH Respondent.
James A. Carmody, Esq., Panelist
Dated: March 9, 2012
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