San Mar Corporation v. Virtual Sky
Claim Number: FA0602000651447
Complainant is San Mar Corporation (“Complainant”), represented by Parna A. Mehrbani, of Lane Powell PC, 601 SW Second Ave., Suite 2100, Portland, OR 97204. Respondent is Virtual Sky (“Respondent”), P.O. Box 20543 SMB, George Town, Grand Cayman 32084, KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <companycasual.com>, registered with Moniker Online Services, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 1, 2006.
On March 2, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <companycasual.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 22, 2006 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@companycasual.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <companycasual.com> domain name is confusingly similar to Complainant’s COMPANYCASUALS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <companycasual.com> domain name.
3. Respondent registered and used the <companycasual.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, San Mar Corporation, has used the COMPANYCASUALS.COM mark in connection with its website offering a generic online apparel and accessories catalog since March 3, 2000.
Respondent registered the <companycasual.com> domain name on December 9, 2003. Respondent is using the disputed domain name to redirect Internet users to Respondent’s commercial website that features links to products and services that compete with Complainant.
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 asserts common law rights in the COMPANYCASUALS.COM mark based on continuous use of the mark in commerce since 2000. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
Complainant has provided
very limited evidence of common law rights in the COMPANYCASUALS.COM mark,
other than continuous use of the mark in the form of its
<companycasuals.com> website since March 2000. Complainant has not provided any evidence of secondary meaning
for the COMPANYCASUALS.COM mark.
Therefore, Complainant has failed to provide sufficient evidence of
common law rights. See
Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003)
(“Although 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 . . . [Complainant’s
claim that it is well known] is a finding that must be supported by evidence
and not self-serving assertions.”); see also
Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that
the complainant failed to establish common law rights in its mark because mere
assertions of such rights are insufficient without accompanying evidence to
demonstrate that the public identifies the complainant’s mark exclusively or
primarily with the complainant’s products); see also Molecular
Nutrition, Inc. v. Network News and Publ’ns, FA 156715 (Nat. Arb. Forum
June 24, 2003) (approving of and applying the principals outlined in prior
decisions that recognized “common law” trademark rights as appropriate for
protection under the Policy “if the complainant can establish that it has done
business using the name in question in a sufficient manner to cause a secondary
meaning identifiable to Complainant's goods or services”).
As Complainant
has failed to show rights in the COMPANYCASUALS.COM mark, it is unnecessary for
the Panel to address the other two elements.
Having failed to establish the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED and the Complaint DISMISSED.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 10, 2006
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