Paris Jewellers Ltd. v. DOMAIN ADMINISTRATOR / NAME ADMINISTRATION INC. (BVI)
Claim Number: FA1408001573085
Complainant is Paris Jewellers Ltd. (“Complainant”), represented by Kirk Bentham, Alberta, Canada. Respondent is DOMAIN ADMINISTRATOR / NAME ADMINISTRATION INC. (BVI) (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <parisjewellers.com>, registered with Uniregistrar Corp.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Flip Jan Claude Petillion, Anne M. Wallace and Héctor Ariel Manoff (Chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2014; the National Arbitration Forum received payment on August 1, 2014.
On August 5, 2014, Uniregistrar Corp confirmed by e-mail to the National Arbitration Forum that the <parisjewellers.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 August 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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@parisjewellers.com. Also on August 5, 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.
A timely Response was received and determined to be complete on August 25, 2014.
On September 3rd, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Flip Jan Claude Petillion, Anne M. Wallace and Héctor Ariel Manoff (Chair) as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has used the trade-mark PARIS JEWELLERS in Canada in association with jewelry; rings, earrings, bracelets, watches, pendants, necklaces; giftware, namely, pens, picture frames, mugs, crystal, jewelry cleaner, jewelry boxes; family jewelry since at least as early as 1987and filed an application in respect of such wares.
2. Domain name is identical to the registered name of a national retail business operating in Canada since 1987 currently having 28 locations.
3. Registrant of the domain parisjewellers.com has no legitimate interests and clearly purchased/registered the domain with the intention of selling it for a profit.
4. Respondent does not conduct business under the trade name Paris Jewellers.
5. Respondent approached Paris Jewellers on several occasions to discuss a purchase price.
6. Domain Name is currently parked and listed for sale.
7. Domain Name has been registered and is being used in bad faith since it has never been used for an active website and has been parked and listed as for sale since October 24, 2004.
B. Respondent
1. Trademark PARIS JEWELLERS’s registration was rejected twice on the grounds of descriptiveness, even with an explicit disclaimer of the words "Paris" and "Jewellers".
2. Complainant has deliberately withheld that information from this Panel.
3. Complainant omitted some correspondence of negotiations regarding the approaches to purchase the domain name to mislead the Panel into believing the Respondent contacted the Complainant spontaneously.
4. Respondent has been legitimately using the domain name for years prior to this claim.
5. A trade name shown in a corporate registration does not establish trade or service mark rights.
6. Complainant filed trademark registration applications the day before the Complaint was filed which are just pending trademark applications.
7. After two refusals, Complainant is trying to get rights form a decision of this Panel.
8. Complainant provided no evidentiary support for its other allegations under the first criterion.
9. The term at issue is descriptive of jewellery ostensibly originating with jewellers in Paris and for other goods, the term is deceptively misdescriptive of the Complainant's business, and is likewise devoid of goodwill therein.
10. The site in question is used to (a) provide paid search links for advertisements for jewellery and (b) to provide a link where one might inquire to obtain the domain name. Any jeweller in Paris, Texas; Paris, Idaho; Paris, France, or any other place named Paris may be interested in obtaining the domain name, which is offered for general sale.
11. The use of a descriptive phrase to provide advertisements relating to the meaning of the phrase - in this instance the sale of jewellery - is a legitimate use of the term an according to the Policy (bona fide use of the domain name prior to notification of a dispute constitutes a legitimate interest).
12. Selling a descriptive domain does not render ongoing use of the domain name to be illegitimate.
13. Complainant has failed to show how the Respondent's use of a descriptive term for nearly a decade, since having obtained it in October 2004, or how the Respondent's willingness to sell a descriptive domain name constitutes a lack of legitimate interests.
14. The term at issue is not solely, exclusively, or famously associated with one party. Moreover, since PARIS JEWELLERS is an inherently descriptive phrase, Complainant should have proven that the domain name was registered with a specific intent relating to the Complainant's claim of rights and no evidence has been submitted.
15. Respondent has registered and used the domain name since October 2004, and any claim by the Complainant would be difficult to be taken seriously in the face of almost ten years of inaction.
16. As regards the e-mail of an apparent offer to sale the domain name submitted by Complainant, in cannot constitute an offer to sell a domain name to a trademark owner, since it was sent to an e-mail address that does not correspond to a trademark claimant (m[redacted]@gmail.com).
17. Contact between Complaint and Respondent was firstly made by Complainant from the cited e-mail address and showing interest in the domain name.
Complainant’s trade name shown in its corporate registration is PARIS JEWELLERS LTD. Complainant filed a trademark application for PARIS JEWELLERS to identify jewellery; rings, earrings, bracelets, watches, pendants, necklaces; giftware, namely, pens, picture frames, mugs, crystal, jewellery cleaner, jewellery boxes; family jewellery, which is still pending. Moreover, two prior applications were rejected on the grounds of descriptiveness. Complainant did not provide evidence regarding the use of its mark.
Respondent registered the <parisjewellers.com> domain name in 2004 and it is used to (a) provide paid search links for advertisements for jewellery and (b) to provide a link where one might inquire to obtain the domain name.
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.
Domain name at issue is identical to PARIS JEWELLERS but Complainant does not have a trademark registration for these terms.
Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark. 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).
Complainant alleges PARIS JEWELLERS has been used in association with specific wares such as jewellery; rings, earrings, bracelets, watches, pendants, necklaces; giftware, namely, pens, picture frames, mugs, crystal, jewellery cleaner, jewellery boxes; family jewellery since 1987 and it has currently 28 locations.
However, those claims are not in any way supported by evidence. No evidence was submitted to support a finding of common law rights. See United States Fire Arms Manufacturing Company v. Salvia Corporation, FA 612350 (Nat. Arb. Forum Feb. 1, 2006)("The type of evidence generally required to support a finding of common law rights in a mark includes business sales figures, revenue, advertising expenditures, number of consumers served, and evidence that there is a strong identification of the mark with Complainant's goods or services").
Even though Complainant submitted evidence to prove corporate registration of PARIS JEWELLERS LTD. this Panel finds it is not sufficient to create trademark rights. See The Woodlands Dermatology Associates, P.A. v. Anthony Perri, Claim Number: FA1110001410742. (The use of the trade name “The Woodlands Dermatology Associates, P.A.” by Complainant is insufficient to establish rights under ¶ 4(a)(i) of the Policy). See also, Diversified Mortgage, Inc. v. World Financial Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002)(finding that the Policy makes clear that its rules are intended only to protect trademarks, and not mere trade names).
Moreover, according to the evidence submitted by Respondent (Exhibit A), Complaint filed two prior applications for PARIS JEWELLERS before the Canadian Intellectual Property Office which were rejected on the grounds of descriptiveness.
This Panel finds that since the claimed mark is comprised of two common, generic and descriptive terms (PARIS JEWELLERS), Complainant should have submitted sufficient evidence to establish secondary meaning and Complainant failed to do it. See Chicago Rest. & Entm’t Guide, Inc. v. Polat, FA 1310901 (Nat. Arb. Forum Apr. 22, 2010) (failing to find common law rights as “the claimed mark is comprised of two common and generic, descriptive or geographic terms, requiring very strong evidence in order to establish secondary meaning” and Complainant failed to provide the required evidence to show secondary meaning).
Complainant has not established rights in the PARIS JEWELLERS mark under Policy ¶ 4(a)(i).
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) due to Complainant’s failure to establish rights in the mark, the Panel declines to analyze 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)).
For Complainant to prevail, it must prove all three elements. Because of the Panel’s ruling on the issue of Identical and/or Confusingly Similar, the Panel makes no ruling on this element. 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 two UDRP factors where the Complainant could not satisfy the requirements of [the third UDRP factor).
For Complainant to prevail, it must prove all three elements. Because of the Panel’s ruling on the issue of Identical and/or Confusingly Similar, the Panel makes no ruling on this issue.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <parisjewellers.com> domain name REMAIN WITH Respondent.
Flip Jan Claude Petillion
Anne M. Wallace
Héctor Ariel Manoff (Chair)
(for the Panel)
Dated: September 12, 2014
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