Raising Cane’s USA, LLC v. Eddie Nguyen
Claim Number: FA1206001449521
Complainant is Raising Cane’s USA, LLC (“Complainant”), represented by Bassam N. Ibrahim of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Eddie Nguyen (“Respondent”), represented by Nathan Peters of Law Offices of Nathaniel Peters, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onelove.net>, registered with GoDaddy.com, LLC.
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 June 19, 2012; the National Arbitration Forum received payment on June 19, 2012.
On June 20, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <onelove.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@onelove.net. Also on June 21, 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.
A timely Response was received and determined to be complete on July 11, 2012.
On July 17, 2012, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ONE LOVE mark (Reg. No. 3,033,511 filed March 4, 2004; registered December 27, 2005).
2. Complainant has used the mark in connection with its restaurant services since 2001.
3. The <onelove.net> domain name is identical to Complainant’s ONE LOVE mark.
4. Respondent is not commonly known by the <onelove.net> domain name.
5. Respondent is making an inactive use of the <onelove.net> domain name.
B. Respondent
1. Respondent registered the <onelove.net> domain name on December 1, 1998.
2. Respondent’s registration of the disputed domain name predates Complainant’s rights in the ONE LOVE mark.
3. Respondent registered the <onelove.net> domain name for the purpose of using a vanity e-mail address, and has used an e-mail address associated with the disputed domain name for personal correspondence since December of 1998.
4. Respondent’s use of the disputed domain name in connection with a vanity e-mail address negates Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) arguments based on inactive holding.
For the reasons set forth below, the Panel finds Complainant is not entitled to the relief requested.
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.
Identical and/or Confusingly Similar
For Complainant to prevail, it must prove all three elements. Because of the Panel’s ruling on the issue of Rights or Legitimate Interests, the Panel makes no ruling on this issue. 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 [two UDRP factors] where the complainant could not satisfy the requirements of [the third UDRP factor]).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent refutes Complainant’s assertion that Respondent is not using the <onelove.net> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Respondent argues that it purchased the disputed domain name to use as a vanity e-mail, and has used it for personal correspondence since December of 1998. Respondent further argues that such use falls within the purview of Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). The Panel finds that Respondent’s use of the disputed domain name to enable Respondent to use the <onelove.net> suffix in a vanity e-mail address used for personal correspondence demonstrates rights and legitimate interests under UDRP ¶ 4(a)(ii). See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that the use of the disputed domain name <aspengrove.com> by the respondent as a family email address, when the use began before the complainant's company existed or had rights in the mark ASPEN GROVE, created legitimate rights and interests in the <aspengrove.com> domain name).
Complainant has not proven this element.
For Complainant to prevail, it must prove all three elements. Because of the Panel’s ruling on the issue of Rights or Legitimate Interests, the Panel makes no ruling on this issue.
Complainant 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 <onelove.net> domain name REMAIN WITH Respondent.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 23, 2012
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