Novamedia Services v. Zabadoo.com AG
Claim Number: FA0112000102821
PARTIES
The
Complainant is Novamedia Services,
Amsterdam, NETHERLANDS (“Complainant”).
The Respondent is Zabadoo.com AG,
Eschen, LIECHTENSTEIN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wwwgoodlot.com>,
<goodlott.com>, <goodlott.org>, <goodlott.net>,
<godlot.com>, registered with Tucows.
PANEL
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.
M.
Scott Donahey, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on December 12, 2001; the Forum received a hard copy of the
Complaint on December 20, 2001.
On
December 12, 2001, Tucows confirmed by e-mail to the Forum that the domain
names <wwwgoodlot.com>,
<goodlott.com>, <goodlott.org>, <goodlott.net>,
<godlot.com> are registered with Tucows and that the Respondent is
the current registrant of the name. Tucows
has verified that Respondent is bound by the Tucows 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
December 28, 2001, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 17, 2002 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@wwwgoodlot.com, postmaster@goodlott.com,
postmaster@goodlott.org, postmaster@goodlott.net, and postmaster@godlot.com by e-mail.
A
timely Response was received and determined to be complete on January 15, 2002.
On January 31, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed M. Scott Donahey
as Panelist.
As the Response contained trademark documents in the
Dutch language without translation and as the Response objected to the use of
such documents, the Panel gave the Respondents until February 21, 2002 to
submit the translation of such documents.
On February 11, 2002, the Panel received by facsimile
from the National Arbitration Forum a translation of one of the seven documents
that had been submitted in Dutch.
On February 25, 2002, the Respondent requested that it
be allowed to respond to this translated document and permission was granted.
On February 27, 2002, the Panel received the Response
Addition.
RELIEF SOUGHT
The
Complainant requests that the domain names be transferred from the Respondent
to the Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that Respondent has registered domain names that are identical or
confusingly similar to Complainant's trademark, that Respondent has no rights
or legitimate interests in respect of such domain names, and that Respondent, a
competitor of Complainant, is seeking commercial gain by confusing user as to
the source of services provided.
B. Respondent
Respondent
contends that Good and lot are generic words and that Goodlott relates
specifically to lotteries, the field of business in which Respondent operates,
that by adding "www" when entering the domain name to resolve to a
web site, the domain name becomes different from Complainant's trademark, and
that the domain name <godlot.com> uses the word "god" rather
than "good." Respondent
further contends that since Complainant has submitted trademark documents in
the Dutch language, Respondent is unable to comment on these.
C.
Additional Submissions
Respondent
submitted an English translation of a letter dated July 25, 2001, which
referenced an application to the United States Patent Office for the trademark
GOODLOT made on 30 April 2001.
In
its Response Addition, the Respondent notes that this is not a trademark
registration, but a letter referencing a trademark application. Respondent asserts that reference to the
United States Patent and Trademark Office ("USPTO") web site shows
that the registration process is still ongoing and that no registration has
issued.
FINDINGS
By visiting the USPTO, the Panel has
confirmed that no trademark registration has issued.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2)
the 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.
The Panel has given Complainant every
opportunity to establish by competent evidence that it is the owner of a
registered trademark. As Complainant is
a Netherlands company, rights in a trademark are established by registration,
and not by use. Complainant chose to
submit an English translation of only one of the seven documents that were
submitted in Dutch. That document does
not establish registration of the trademark GOODLOT. A visit to the USPTO web site confirmed that registration for the
trademark GOODLOT has not issued. No
evidence was submitted as to any of the other claimed marks.
While it appears that Complainant might
well be able to establish trademark rights, it has failed to do so in
compliance with the Policy and the Rules.
This Panel is bound by that Policy and those Rules. Accordingly, the Complaint must be dismissed
for failure to establish rights in the marks claimed.
DECISION
Because Complainant has failed to
establish rights to any of the marks claimed, Complainant's Complaint is hereby
dismissed.
M. Scott Donahey, Panelist
Dated: February 28, 2002
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