Telemedia Development LLC v. Unasi
Management Inc.
Claim
Number: FA0504000465923
Complainant is Telemedia Development LLC, 950 South Coast Dr., Ste. 175, Costa
Mesa, CA 92626 (“Complainant”).
Respondent is Unasi Management
Inc. (“Respondent”), Galerias Alvear, Via Argentina 2, Oficina #3, Zona 5,
Panama 5235, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wildsms.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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 April
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 25, 2005.
On
April 21, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain name <wildsms.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that
Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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
April 28, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 18, 2005 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@wildsms.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 19, 2005, 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." 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 <wildsms.com>
domain name is identical to Complainant’s WILDSMS mark.
2. Respondent does not have any rights or
legitimate interests in the <wildsms.com> domain name.
3. Respondent registered and used the <wildsms.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Telemedia Development LLC, registered the <wildsms.com> domain
name approximately three years ago in relation to its SMS mobile text delivery
service. Complainant has 391,833 paid
users of the SMS mobile text delivery service throughout the world.
Respondent filed
a request with the registrar that the disputed domain name be transferred into
Respondent’s possession upon any failure of Complainant to re-register the
disputed domain name with the registrar.
Complainant failed to re-register the <wildsms.com> domain
name and on the expiration date, April 6, 2005, Respondent registered the
disputed domain name. SMS messages sent
by users of Complainant’s SMS mobile text delivery service are redirected to
Respondent’s <wildsms.com> server, which is capable of recording
usernames, passwords, and the content of the user’s private SMS messages.
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.
Prior to any
determination of similarity between Complainant’s mark and Respondent’s domain
name, Complainant first must show that it has rights in the WILDSMS mark. See TotalFinaElf E&P USA, Inc. v.
Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that in order to
bring a claim under the Policy, the complainant must first establish a prima
facie case. The complainant’s initial burden is to provide proof of “valid,
subsisting rights in a mark that is similar or identical to the domain name in
question”); see also FRH Freies Rechenzerntrum v. Ingenieurburo FRH, FA
102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that the complainant has
not proven by a preponderance of the relevant, admissible, and credible
evidence that the domain name in question is identical to a trademark in which
the complainant has rights despite the complainant’s mark being the dominant
feature of the complainant’s trade name).
Complainant has
failed to meet this burden. The mere
fact that Complainant registered the disputed domain name approximately three
years ago and has 391,833 customers is not enough to show that the WILDSMS mark
has gained secondary meaning. Moreover,
Complainant did not provide evidence that the mark is registered with a
trademark authority. Therefore,
Complainant has failed to establish that it has rights in the WILDSMS
mark. See Weatherford
Int. Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (stating
that “[a]lthough Complainant
asserts common law rights in the WELLSERV mark, it failed to submit any
evidence indicating extensive use or that its claimed mark has achieved
secondary source identity . . . [a]lthough Complainant’s WELLSERV product and
related services may be well-known among relevant consumers, that is a finding
that must be supported by evidence and not self-serving assertions”); see
also GLB Servicos Interativos
S.A. v. Ultimate Search Inc., D2002-0189 (WIPO May 29, 2002)
(holding that the complainant’s mere possession of a domain name registration,
without demonstrating any common-law or registered rights in a mark, was
insufficient to grant standing to bring a claim under the UDRP); see also Sampatti.com Ltd. v. Rana, AF-0249
(eResolution July 31, 2000) (“[T]he mere fact of creating and operating a
company having as a name a common word plus a dot and a TLD suffix does not
give to the company itself the sole right to the word.”).
Had Complainant
provided this panel with examples of dated advertising, the affidavits of third
parties or other evidence that the mark WILDSMS has acquired a secondary
meaning in the mind of the public, there may have been an evidentiary basis upon which to conclude that a common
law trademark is involved here, even absent registration.
Since
Complainant failed to establish that it has rights in a mark pursuant to
paragraph 4(a)(i) of the Policy, it is unnecessary to address paragraphs
4(a)(ii) and (iii) 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 Ricom, Inc. v. Ricom, FA 348012 (Nat. Arb. Forum Dec. 16, 2004)
(finding that failure to establish one element of the policy deems it
unnecessary for the panel to address any other element).
Having failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED, without prejudice.
James A. Carmody, Esq., Panelist
Dated:
June 2, 2005
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