Gregg Mercede v. Wachter
Consulting Inc
Claim Number: FA0805001194793
PARTIES
Complainant is Gregg Mercede (“Complainant”), represented by Gregg Mercede, Connecticut, USA. Respondent is Wachter Consulting Inc. (“Respondent”), Panama City, Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mercede.com>, registered with Dynadot, LLC.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Honourable Neil Anthony Brown QC as Panelist, David A. Einhorn as
Panelist, and Sandra J. Franklin as Panelist and Chairperson.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 22, 2008; the
National Arbitration Forum received a hard copy of the Complaint on May 30, 2008.
On May 30, 2008, Dynadot, LLC confirmed by e-mail to the
National Arbitration Forum that the <mercede.com> domain name is
registered with Dynadot, LLC and that the
Respondent is the current registrant of the name. Dynadot, LLC
has verified that Respondent is bound by the Dynadot,
LLC 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 June 10, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 30, 2008 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@mercede.com by e-mail.
A timely Response was received by e-mail on July 1, 2008. The Response
was deemed deficient pursuant to ICANN Rule 5 because a hard copy of the
Response was not received until after the Response deadline.
On July 11, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Honourable Neil Anthony Brown QC as
Panelist, David A. Einhorn as Panelist, and Sandra J. Franklin as Panelist and
Chairperson.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant states the following:
1. The
<mercede.com> domain name matches his last name, and is part of his
service offering.
2. The Respondent is parking the
<mercede.com> domain name for 411.com.
B. Respondent’s response was technically
deficient, since the hard copy was received late by the Forum. The Panel finds that it is unnecessary to
consider the deficient response, for the reasons set forth below.
FINDINGS
The Panel finds that the Complainant has
failed to prove that he has rights in a trademark which is confusingly similar
to the disputed domain name.
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.
Complainant makes a bald statement
that the domain name matches his last name, and that it is part of his service
offering, though he does not state what service offering. Complainant does not provide evidence of any
registered trademark, and actually fails to even allege any rights to any mark.
Therefore, the Panel finds that Complainant has failed to establish rights in
any mark for the purposes of Policy ¶ 4(a)(i).
See Falwell v. Cohn, D2002-0184 (WIPO June 3, 2002) (“Complainant
claims a common law trademark in his personal name. The Complainant has failed to show that his
name, well known as it is, has been used in a trademark sense as a label of
particular goods or services.”); see also
Kip Cashmore v.
URLPro, D2004-1023 (WIPO Mar.
14, 2005) (finding no common law rights where the complainant did not present
any credible evidence establishing acquired distinctiveness).
The Panel declines to analyze the other two elements of the Policy, as
well as the late response that was submitted, as the Complaint cannot
succeed. 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 Hugo Daniel Barbaca
Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into
the respondent’s rights or legitimate interests or its registration and use in
bad faith where the complainant could not satisfy the requirements of Policy ¶
4(a)(i)).
DECISION
Having failed to establish the very first required element under the
ICANN Policy, the Panel concludes that relief shall be DENIED.
Sandra J. Franklin, Panelist and Chairperson
David A. Einhorn, Panelist
Dated:
July 25, 2008
PARTIAL DISSENT
I would reach the same conclusion and decision
as the majority of the Panel, but by a slightly different route. The first question that arises is whether the
Panel should accept the late Response filed by the Respondent and take it in
account. The majority is of the opinion that the Panel should not do so. I am of the opinion that the Panel should
accept the late Response and take it into account. It is clear that the Rules should be complied
with, but it is also clear that the Panel has a discretion which must be
exercised having regard to all relevant matters and should give reasons why it
accepts or rejects a late Response.
Having considered all of those matters I would
accept the Response for the following reasons:
First, the Response was late by only a very
short period of time. Moreover, the record shows that, well within the time for
the Response, the Respondent had put a submission to the Forum as to why the
Complaint should be dismissed. In other words, the Respondent has not ignored
the process or been contemptuous or indifferent to it but had in fact been
taking part in it before the time for delivery of the hard copies of the
Response expired.
Second, the hard copies of the Response were
due on June 30, 2008. On June 27, 2008 the Respondent sent an email to the
Forum to the effect that he was travelling in
Third, the delay has not caused any prejudice
and in particular the Complainant has not claimed that he has suffered any
prejudice.
Fourth, the Complaint was inadequate in itself
and in reality it is only by reading the Response that the reader is able to
get a complete understanding of the issues involved in this case.
I would therefore accept the Response and add
to the Decision the following, to show that the Response has been taken into
account.
PARTIES’ CONTENTIONS
Respondent states the following:
1. The Complainant has not shown by evidence or
argument that the domain name is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights.
2. The Respondent has a right or legitimate
interest in the domain name as it acquired the domain name legitimately and is
in the business of using domain names for the purpose of earning income.
3. The Complainant has not shown by evidence or
argument that the Respondent registered and is using the domain name in bad
faith.
DISCUSSION
I agree with the conclusion of the majority that the Complainant has
not provided evidence of a registered trademark and has not alleged any rights
to any mark and that the Complaint must fail for that reason. To show that the Response has been taken into
account, I would include a statement in the decision to the effect that the
above proposition was the submission of the Respondent and that the Panel
accepts the Respondent’s submission and the reasons it advanced for it.
As the Complainant has failed to make out the first of the three
elements he must establish, is not necessary for the Panel to consider the
second and third elements.
REVERSE DOMAIN NAME HIJACKING
The Respondent submits that the Panel should find that the present case
is an attempt at Reverse Domain Name Hijacking as the domain name has been
registered in the name of the Respondent for the last six years, the
Complainant took no steps to obtain registration of the name during that time
and for the same time the Complainant seems to have been content to have his
name reflected in a different domain name, namely <mercede.net>. The Complainant has not sought to rebut or
reply to any of these arguments. The
arguments advanced by the Respondent are quite strong and it has been useful to
have them advanced. Moreover, the Complainant’s case is weak and he has done
nothing to show the reason for the long delay in bringing the Complaint. But on
balance I would not find Reverse Domain Name Hijacking as, whatever the
weaknesses in the Complainant’s present case may be, he clearly once held the
registration of the domain name and it is understandable why he would now try
to retrieve it.
DECISION
I agree with the Decision of the majority that, having failed to
establish the very first required element under the ICANN Policy, the relief
claimed should be DENIED.
Honourable Neil Anthony Brown QC
July 25, 2008
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