East Kentucky Tire d/b/a ATV Direct v.
Infoprompt Ltd c/o Darren Duesbury
Claim
Number: FA0402000241984
Complainant is East Kentucky Tire d/b/a ATV Direct (“Complainant”), represented by Wesley Case, of East Kentucky Tire d/b/a ATV Direct, 506
Bucks Branch, Martin, KY 41649.
Respondent is Infoprompt Ltd c/o Darren Duesbury (“Respondent”), Progress House, Briminton Road
North, Chesterfield, Derbys S41 9AP, United Kingdom.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <atvdirect.com>, registered with Tucows
Inc.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 26, 2004; the Forum received a hard copy of the
Complaint on March 2, 2004.
On
February 27, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain
name <atvdirect.com> is registered with Tucows Inc. and that
Respondent is the current registrant of the name. Tucows Inc. has verified that
Respondent is bound by the Tucows 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
March 9, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 29, 2004 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@atvdirect.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 9, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <atvdirect.com>
domain name is identical to Complainant’s ATV DIRECT mark.
2. Respondent does not have any rights or
legitimate interests in the <atvdirect.com> domain name.
3. Respondent registered and used the <atvdirect.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
ships ATV tires and accessories nationally and internationally. Complainant has used the ATV DIRECT mark in
connection with its business since October 2001. Complainant filed an application with the U.S. Patent and
Trademark Office (“USPTO”) on December 10, 2003 for the ATV DIRECT TIRES, WHEEL
& PERFORMANCE WAREHOUSE mark and logo.
Complainant advertises its products in conjunction with the ATV DIRECT
mark via the Internet, catalogs, magazines and television.
Respondent
registered the <atvdirect.com> domain name on January 29,
1999. Complainant alleges that the
domain name is used to direct Internet users to a financial website. Moreover, Complainant asserts that Respondent’s
domain name did not resolve to a developed website until January 2004, several
months after Respondent attempted to sell the domain name to Complainant. Furthermore, Complainant contends that
Respondent attempted to begin a bidding war for the domain name between
Complainant and others and that Respondent claimed others had an interest in
the domain name. Per Complainant’s last
communication with Respondent, the domain name was sold to another company for
$5,000. However, Complainant asserts
that the sale never occurred because the WHOIS information still lists
Respondent as the registrant of the <atvdirect.com> 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."
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.
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.
Due to
Respondent’s failure to provide the Panel with a Response, the Panel may accept
all reasonable allegations and inferences in the Complaint as true. See 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”); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint).
Complainant
asserts that it has established rights in the ATV DIRECT mark by its pending
trademark application and through its use of the mark in commerce since
2001. Due to Respondent’s failure to
contest Complainant’s assertion the Panel accepts the assertion as true. Thus, the Panel finds that Complainant has
established rights in the ATV DIRECT mark.
See SeekAmerica Networks
Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do
not require that Complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist. Rights in the mark can be established by pending
trademark applications); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of the said name
[<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000)
(finding that Complainant has common law rights in the mark FISHTECH which it
has used since 1982).
However,
Complainant did not establish rights in the mark until 2001, at the
earliest. Thus, Complainant did not
establish rights in the mark until after the date in which Respondent
registered its domain name. Therefore,
the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i). See Abt
Electronics, Inc. v. Motherboards.com, FA 221239 (Nat. Arb. Forum Feb.
20, 2004) (Complainant failed to establish Policy Paragraph 4(a)(i)
because Respondent's rights in the <abt.com> domain name predated
Complainant's registration application for the ABT mark); see also
Phoenix
Mortgage Corp. v. Toggas,
D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily
implies that the Complainant’s rights predate the Respondent’s registration…of
the domain name.”).
Because
Complainant must prove all three elements under Paragraph 4(a) of the Policy to
prevail in this proceeding, Complainant's failure to prove the elements listed
in Policy Paragraph 4(a)(i) means that the Panel need not consider whether
Complainant has proven the remaining elements contained in Policy Paragraphs
4(a)(ii) and (iii). See Creative
Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because Complainant must prove all three elements under the
Policy, Complainant’s failure to prove one of the elements makes further
inquiry into the remaining elements unnecessary).
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 <atvdirect.com> domain name REMAIN with
Respondent.
John
J. Upchurch, Panelist
Dated: April 23, 2004
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