Shiekh S. Ellahi d/b/a SHIEKH SHOES v. Domain Deals c/o Domain Administrator
Claim Number: FA0612000876284
Complainant is Shiekh S. Ellahi d/b/a SHIEKH SHOES (“Complainant”), represented by Roberto
Saldana, 4083 East Airport Drive, Ontario, CA 91761. Respondent is Domain Deals c/o Domain
Administrator (“Respondent”), PO Box
292-WOB,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sheikhshoes.com>, registered with eNom, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 29, 2006.
On December 27, 2006, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <sheikhshoes.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 January
10, 2007, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
January 30, 2007
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@sheikhshoes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 6, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <sheikhshoes.com> domain name is confusingly similar to Complainant’s SHIEKH mark.
2. Respondent does not have any rights or legitimate interests in the <sheikhshoes.com> domain name.
3. Respondent registered and used the <sheikhshoes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shiekh S. Ellahi d/b/a SHIEKH SHOES, is a worldwide footwear
and apparel retailer. In connection with
the provision of these goods and services, Complainant has registered the
SHIEKH mark with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 3,135,470 issued August 29, 2006; filed August 2, 2005).
Respondent registered the <sheikhshoes.com> domain name on February 18, 2006.
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 rights in the SHIEKH mark through registration with the USPTO. Although the mark was not issued until August 29, 2006, the Panel finds that the effective date of Complainant’s rights date back to the original filing date, which in this case is August 2, 2005. The Panel finds that Complainant’s rights precede Respondent’s registration and therefore serve as evidence of rights in the mark for purposes of Policy ¶ 4(a)(i). See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that Respondent’s <sheikhshoes.com> domain name is
confusingly similar to Complainant’s mark.
Respondent’s disputed domain name contains the dominant features of
Complainant’s SHIEKH mark and merely transposes the letters “i” and “e” while
adding the generic term “shoes,” a term with a direct relation to Complainant’s
business. The Panel finds that
Respondent’s <sheikhshoes.com>
domain name is confusingly similar to Respondent’s domain name for purposes of
Policy ¶ 4(a)(i).
See Google Inc. v. Jon G., FA 106084 (Nat. Arb.
Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to
the complainant’s GOOGLE mark and noting that “[t]he transposition of two
letters does not create a distinct mark capable of overcoming a claim of
confusing similarity, as the result reflects a very probable typographical
error”); see also Pier 1 Imps., Inc. v.
Success Work, D2001-0419 (WIPO
May 16, 2001) (finding that the domain name <peir1.com> is confusingly
similar to the complainant's PIER 1 mark); see also Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding
confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
While Complainant has alleged that Respondent does not have
rights or legitimate interests in the <sheikhshoes.com>
domain name, Complainant has failed to allege the use Respondent makes of the
domain name and has failed to set forth evidence of bad faith registration and
use. Complainant merely restates the
Policy language in its Complaint and nothing more. The Panel finds that without any proof of
Respondent’s use, the Panel must deny Complainant’s claim. See Claessens Prod. Consultants
BV v. Claessens Int’l Ltd., FA 238656 (Nat.
Arb. Forum Apr. 23, 2004) (finding that Complainant failed to
meet its burden pursuant to Policy ¶ 4(a)(ii) where Complainant neglected to
state how Respondent used the disputed domain name in the Complaint).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 19, 2007
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