TallCat.com LLC v. [Registrant]
Claim Number: FA1401001537927
Complainant is TallCat.com LLC (“Complainant”), represented by Shelley Detwiller DiGiacomo of DDP Legal, Arizona, USA. Respondent is [Registrant] (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <creativ.com>, registered with GODADDY.COM, 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 7, 2014; the National Arbitration Forum received payment on January 9, 2014.
On January 9, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <creativ.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 January 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2014 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@creativ.com. Also on January 13, 2014, 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 February 7, 2014, pursuant to Complainant's request to have the dispute decided by a three-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 <creativ.com>, domain name, the domain name at issue, is confusingly similar to Complainant’s [CREATIV] mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant claims to have filed trademark applications for three service marks with the United States Patent and Trademark Office on October 1, 2013, roughly four months ago. The marks are [CREATIV] (Reg. No. 86,080,098), THE CREATIVE MOVEMENT (86,079,992), and I AM A CREATIV (86,079,288). All three marks are currently awaiting examination according to Complainant.
Complaint has alleged common law rights by using the [CREATIV] mark in the course of its routine business for approximately two years as its brand identity. Respondent’s <creativ.com> domain name is identical to Complainant’s CREATIV mark. The disputed domain name includes Complainant’s mark in its entirety while adding the generic top-level domain (“gTLD”) “.com.”
The WHOIS search revealed that the <creativ.com> domain name was created in 1999, and Complainant alleges that Respondent had not made any use of the disputed domain name. The <creativ.com> domain name resolves to a website that includes a general offer to sell the disputed domain name. Complainant claims that Respondent has not replied to numerous offers from Complainant to purchase the domain name beginning in August of 2013, roughly five months ago. The <creativ.com> domain name contains links to other websites, and Complainant presumes Respondent is generating click-through revenue from these links.
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."
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.
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.”).
Complainant states that it filed trademark applications for three service marks with the USPTO on October 1, 2013. Complainant explains that those marks are [CREATIV] (Reg. No. 86,080,098), THE CREATIVE MOVEMENT (86,079,992), and I AM A CREATIV (86,079,288). Complainant claims that all three marks are currently awaiting examination. The Panel notes that Complainant does not include in the Complaint any of the trademark application documents and, as such, there is absolutely nothing in the record to give credit to the contention that there are any trademark applications by Complainant. Therefore, the Panel must look to Complainant’s common law rights, if any, to determine if Complainant has rights in the [CREATIV] mark pursuant to Policy ¶ 4(a)(i).
Past panels have found that ownership of a registered trademark is not necessary for establishing rights under Policy ¶ 4(a)(i). 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)). Therefore, the Panel must determine whether Complainant has established common law rights, which past panels have found to be sufficient to meet the burden of establishing rights under Policy ¶ 4(a)(i). See 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). Common law rights require that Complainant’s mark has established a secondary meaning. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning). In The Gourmet Depot v. DI S.A. / Administration DomComplainant, FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel stated that evidence relevant to proving secondary meaning “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” Complainant claims that it has established common law rights by using the [CREATIV] mark in the course of its routine business for approximately two years as its brand identity. The Panel notes that Complainant provides support for its assertion of common law rights by way of a twitter account, which has 1,591 followers, as well as a website located at <iamcreativ.com>. The Panel also notes that the twitter account and the website make use of the [CREATIV] mark. It is clear that the domain name at issue was registered in 1999, fourteen years ago. It is also clear that Complainant only claims use of the [CREATIVE] mark for the past two years with no evidence of significant and widespread public association with Complainant or its goods and services. The Panel finds that the above evidence is not sufficient to establish a secondary meaning for the mark in the mind of the public and thus to confer common law rights in the Complainant’s [CREATIV] mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has not been established.
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel it declines as unnecessary the analysis of the other two elements of the Policy. 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 Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
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 <creativ.com> domain name remain with Respondent.
James A. Carmody, Esq., Panelist
Dated: February 9, 2014
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