Hidden Values, Inc. v. Spirit Marketing c/o Paul Morrissette
Claim Number: FA1204001437627
Complainant is Hidden Values, Inc. (“Complainant”), represented by Steven L. Russell of Russell & Wright, PLLC, Texas, USA. Respondent is Spirit Marketing c/o Paul Morrissette (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trianglekidsdirectory.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.
David A. Einhorn as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2012; the National Arbitration Forum received payment on April 2, 2012.
On April 3, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <trianglekidsdirectory.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@trianglekidsdirectory.com. Also on April 4, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 Alleges:
1. Complainant’s KID’S DIRECTORY mark is registered with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 3,778,146 filed December 13, 2005; registered April 20, 2010 and citing a first use in commerce date of February 1, 1990).
2. Complainant also owns common law rights in its KID’S DIRECTORY mark.
3. Respondent’s disputed domain name is confusingly similar to Complainant’s KID’S DIRECTORY mark.
4. Respondent’s disputed domain name incorporates Complainant’s mark in its entirety and merely removes an apostrophe and a space and adds the geographic locator (“triangle”) as well as the generic top level domain (“gTLD”) “.com.” The Wake, Durham, Cumberland and Orange counties of North Carolina is known as the “Triangle”. This is the geographic area where Respondent formerly published a directory under license from Complainant.
5. Respondent has no rights or legitimate interests in respect of the disputed domain name.
6. Respondent is using the disputed domain name for commercial gain and is not making a legitimate noncommercial or fair use of the domain name.
7. Respondent is using the disputed domain name in bad faith.
8. Respondent continues to renew the registration and use the disputed domain name without license or authorization.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, the Panel notes that Respondent registered the disputed domain name on January 21, 2004.
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."
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.
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.”).
Complainant obtained a registration with the USPTO for its KID’S DIRECTORY mark (Reg. No. 3,778,146) on April 20, 2012, based upon a filing date of December 13, 2005. Based on this evidence, the Panel finds that Complainant has established rights in the KID’S DIRECTORY mark pursuant to Policy ¶ 4(a)(i), through its trademark registrations with the USPTO, dating back to December 13, 2005. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant claims that the domain name <trianglekidsdirectory.com> is confusingly similar to Complainant’s mark because it incorporates Complainant’s KID’S DIRECTORY mark in its entirety, while removing an apostrophe and a space and adding a geographic indicator for a region of North Carolina known as the “triangle”. The Panel need not resolve this issue, since, as will be discussed, Complainant has not established that the disputed domain name was registered and used in bad faith.
Complainant argues that Respondent is not commonly known by the domain name or any term incorporated therein. Complainant provides the WHOIS information for Respondent, which the Panel finds is indicative that Respondent is known as an entity other than the trademark associated with Complainant. The Panel also notes that Respondent does not provide any allegations or evidence that it is commonly known by the disputed domain name. Based on the evidence before it, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent uses the <trianglekidsdirectory.com> domain name to resolve to a website including, inter alia, click-through advertising from which Respondent likely receives revenue. The Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links for products and services of third parties does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
In order for Complainant to prevail in this factor, Complainant must show that Respondent registered the disputed domain name in bad faith. The disputed domain name was registered by Respondent on Jan. 21, 2004. Complainant’s trademark registration, however, is based on a filing date of Dec. 13, 2005, which is nearly 2 years following registration of the disputed domain name. Complainant has referenced the Feb. 1, 1990 date of first use in Commerce of the mark asserted in its registration at the USPTO and makes a vague allegation of common law rights based thereon. However, Complainant has presented no documentary evidence in this proceeding that would support a claim of trademark use in 1990.
The dates of first use and first use in Commerce claimed on a trademark application do not establish an evidentiary presumption in favor of a trademark registrant. As McCarthy has noted: “The allegation of a date of first use in a use-based application for registration is not evidence of a date of first use on behalf of an applicant or registrant. This is because an applicant is not required to introduce evidence of the date of use of the mark or of the date of first use of the specimens submitted with the application.” 3 McCarthy on Trademarks and Unfair Competition § 20.28 (4th ed.). See also 37 CFR § 2.122(b)(2) (“The allegation in an application for registration, or in a registration, of a date of first use is not evidence on behalf of the applicant or registrant; a date of first use must be established by competent evidence”.)
In the instant proceeding, Complainant has provided no documentary or other evidence to support the date of first use in Commerce referenced in its trademark application. This Panel therefore finds there to be a lack of evidentiary basis by which it might reasonably conclude that Complainant held rights in the KID’S DIRECTORY trademark prior to the May 12, 1995 date on which Respondent registered the disputed domain name.
The Panel determines for purposes of this proceeding that Complainant has established trademark rights as of the date of its trademark application. Since those rights arose nearly two years after Respondent’s registration of the disputed domain name, the domain registration could not have been made in bad faith. See, Mariposa Ltd. v. Stonecutter, D2010-0200 (WIPO March 28, 2010); Hathaway v. Wimberly, FA 1216935 (Nat. Arb. Forum Sept. 18, 2008); and Kay Hill Ltd. v. Texas Intellectual Property Assoc., FA 1190984 (Nat. Arb. Forum July 9, 2008).
Complainant also makes a vague allegation regarding Respondent’s renewals of the domain registration. However, Complainant has not alleged when such renewals supposedly occurred, nor does Complainant provide any evidence or documentation in support of this allegation. Thus, this naked allegation does not affect this Panel’s analysis.
For the foregoing reasons, Complainant has not satisfied Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered, without prejudice, that the <trianglekidsdirectory.com> domain name REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: May 15, 2012
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