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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Primo Incense v. Spring.net
Claim Number: FA0101000096565
PARTIES
The Complainant is Sari Rattner Dahl Primo Incense Distributing Co., Gig Harbor, WA, USA ("Complainant") represented by Saralyn R. Dahl. The Respondent is Spring.net, Cedar Creek, TX, USA ("Respondent") represented by Stephen H. Sturgeon.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "primoincense.com", registered with Network Solutions, Inc.
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 a panelist in this proceeding.
R. Glen Ayers served as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 30, 2001; the Forum received a hard copy of the Complaint on January 26, 2001.
On February 5, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "primoincense.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 February 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 2001 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@primoincense.com by e-mail.
A timely response was received and determined to be complete on March 5, 2001.
A timely additional submission from the Complainant was determined to be complete on March 12, 2001.
On March 20, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed R. Glen Ayers as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that it has owned "Primo Incense Distributing Company" since 1972. Complainant has submitted some evidence that it owns a trademark, "Primo." Additionally, Complainant asserts that "Primo Incense is a legally trademarked name...." However, no evidence has been submitted by Complainant of any interest of any trademark other than "Primo."
Complainant asserts that it currently uses the domain name "primo-incense.com" but that registration of "primoincense.com" by Respondent has blocked Respondent’s use of that domain name. Complainant alleges that Respondent has offered to sell the domain name for $5,000.00.
B. Respondent
Respondent asserts that the only trademark held by Complainant is the word "Primo." Respondent, obviously, asserts that the word "Primo" and the name the "Primo Incense" are not identical. Respondent also asserts that Complainant has made no assertion that Respondent has no rights in the domain name, "primoincense.com."
Finally, Respondent asserts that there is no assertion by Complainant that Respondent has acted in bad faith. Respondent goes on to offer evidence showing lack of bad faith, including affidavits of the principals of Respondent, where each asserts that Respondent has never used the "primoincense" site in an attempt to solicit customers or disrupt the business of Complainant.
C. Additional Submissions
Complainant filed a timely additional submission asserting that Respondent’s "primoincense.com" site did link to an incense sales site operated by Respondent. Complainant also attempted to show in the additional submission lack of good faith on the part of Respondent by pointing out the obvious: Respondent certainly registered the domain "primoincense.com" in order to trade in the incense business in potential competition with Complainant.
FINDINGS
Complainant only holds a trademark in the word "Primo". As such, Complainant has failed to meet the first element required under ICANN Policy 4, which requires Complainant to prove that: "The domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights...." See: Kittinger Co. v. Kittinger Collector, AF 0107 (eResolution May 8, 2000).
Complainant has wholly failed to demonstrate that it has trademark rights in the phrase "primo incense" in the form of a registered trademark or a common law trademark. That Complainant allegedly has a trademark in the word "primo" is not sufficient (further, the evidence of the existence of the trademark, "Primo", is not in the form of any evidence of registration with the U.S. Patent and Trademark Office but rather in the form of a bill of sale. There is no competent evidence presented that Complainant actually has any registered interest in the word "Primo."
The Complainant must demonstrate the factual existence of its rights in a trademark or service mark. Complainant has failed to do so. See: Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000).
In the alternative, Respondent certainly has rebutted any allegation that Complainant holds a right in a mark which "is identical or confusingly similar to" Respondent’s registered 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.
Identical and/or Confusingly Similar
As discussed above, Complainant has failed to demonstrate the first element of ICANN Policy 4 and has failed to demonstrate that it holds any interest in the phrase "primo incense." The trademark "Primo" and the domain name "primoincense.com" are not identical or confusingly similar.
Rights or Legitimate Interests
Because the first element of the ICANN policy has not been demonstrated, whether or not Respondent has legitimate interests is irrelevant.
Registration and Use in Bad Faith
Likewise, registration and use in bad faith is not a relevant inquiry, although it seems reasonable to assume, as does Complainant, that the term "primo incense" as a domain name was registered with the purpose of directing traffic away from Complainant to the Respondent. That said, the mere presence of bad faith is not sufficient if Complainant holds no rights in the mark.
DECISION
The domain name "primoincense.com" will not be transferred.
R. Glen Ayers, Jr., Esq.
Arbitrator
Dated: April 12, 2001
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URL: http://www.worldlii.org/int/other/GENDND/2001/724.html