Wildwood Capital LLC v.
Claim Number: FA0705000990340
Complainant is Wildwood Capital LLC
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wildwoodcapital.com>, registered with Register.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 18, 2007; the National Arbitration Forum received a hard copy of the Complaint May 18, 2007.
On May 21, 2007, Register.com confirmed by e-mail to the National Arbitration Forum that the <wildwoodcapital.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com verified that Respondent is bound by the Register.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 12, 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@wildwoodcapital.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June18, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <wildwoodcapital.com>, is confusingly similar to Complainant’s WILDWOODCAPITAL.COM mark.
2. Respondent has no rights to or legitimate interests in the <wildwoodcapital.com> domain name.
3. Respondent registered and used the <wildwoodcapital.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wildwood Capital LLC, has used the WILDWOODCAPITAL.COM mark in connection with the provision of financial consulting and investment banking services. Complainant states: “Wildwood Capital is an unregistered service mark and trade mark on which this Complaint is based.”
Respondent registered the <wildwoodcapital.com> domain name December 19, 2001, as Complainant’s agent and on behalf of Complainant. Respondent, a former employee of Complainant, maintained the disputed domain name. Respondent stopped working for Complainant in 2004 and opened its own business but failed to transfer the domain name to Complainant before leaving. Efforts to transfer the name have proven unsuccessful; however, Complainant is still paying for the registration of the disputed domain name. Respondent is not currently using the <wildwoodcapital.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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 urges that it has common law rights in the
WILDWOODCAPITAL.COM mark and does not pursue rights under Policy ¶ 4(a)(i) based on any registration of the mark. Complainant’s proof of common rights is
sparse and Complainant admits that: “Wildwood Capital is an unregistered service
mark and trade mark on which this Complaint is based.” However, Complainant’s allegations of common
law rights in the mark are not sufficient standing alone to prove that a mark
has obtained secondary meaning. Without
evidence to support allegations in the Complaint, the Panel is unable to find
common law rights. Therefore, the Panel
finds that while Complainant most likely could have met its burden, it failed
in this submission to satisfy the requirement of showing protected rights in
the mark under Policy ¶ 4(a)(i). See Weatherford Int’l,
Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not
support a finding of common law rights in a mark in lieu of any supporting
evidence, statements or proof (e.g., business sales figures, revenues,
advertising expenditures, number of consumers served, trademark applications or
intent-to-use applications)); see also TotalFinaElf E&P USA, Inc. v.
Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a
claim under the Policy, Complainant must first establish a prima facie
case. 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.”).
Given that Policy ¶ 4(a) requires a Complainant to satisfy
all three elements before an order transferring a domain name can be obtained,
the Panel’s holding as to the first prong of the burden under Policy ¶ 4(a)(i) renders consideration of the other two elements of the
Policy irrelevant. 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 elements unnecessary); see also CyberImprints.com, Inc.
v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that,
although the respondent’s domain name <cyberimprints.com> was identical
to the complainant’s incorporated business name, the complainant did not claim
to hold any trademark or service mark rights in CYBERIMPRINTS or
CYBERIMPRINTS.COM, and therefore, its request for transfer was denied).
Although the allegations that Complainant brought suggests that Complainant could be able to bring a complaint accompanied by appropriate proof that would satisfy all three prongs of the burden, the Panel does not address the remaining two elements in this Decision.
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 <wildwoodcapital.com> domain name should not be transferred.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 2, 2007.
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