DECISION

Razorbox, Inc. v. Torben Skjodt

Claim Number: FA0303000150795

PARTIES

Complainant is Razorbox, Inc., Lacey, WA, USA (“Complainant”) of Razorbox, Inc. Respondent is Torben Skjodt, Paris, FRANCE (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <razorbox.com> registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 20, 2003; the Forum received a hard copy of the Complaint on March 21, 2003.

On March 24, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <razorbox.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 March 31, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 21, 2003 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@razorbox.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 1, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <razorbox.com> domain name is identical to Complainant’s RAZORBOX mark.

2. Respondent does not have any rights or legitimate interests in the <razorbox.com> domain name.

3. Respondent registered and used the <razorbox.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has a pending trademark application with the United States Patent and Trademark Office, which was filed on January 31, 2003. The application indicates a first use of September 13, 2001 and a first use in commerce of January 15, 2002. Complainant asserts that it has been in business for two years. Complainant operates a website at <razorbox.net>, which provides website construction services.

Respondent registered the <razorbox.com> domain name on December 10, 1999. The disputed domain name does not resolve to an active website.

DISCUSSION

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."

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.

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

Respondent has not replied to the allegations in the Complaint. Thus, the Panel is permitted to presume that all reasonable allegations and inferences in the Complaint are true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

However, even if the Panel accepts all of Complainant’s assertions, Complainant has not satisfied its initial burden of proof and, therefore, has failed to establish the prima facie case required under the Policy. With regard to Policy ¶ 4(a)(i), Complainant must first show that the disputed domain name is either identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant has not established the requisite trademark or common law rights to grant Complainant the necessary “standing” for the Panel to find in its favor. First, Complainant’s pending trademark application does not in and of itself demonstrate trademark rights in the mark applied for. See Amsec Ent. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (finding that Complainant’s pending trademark applications do not establish any enforceable rights to the mark until a trademark registration is issued); see also Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., [1999] USCA7 493; 188 F.3d 427, 435 (7^th Cir. 1999) (finding that the filing of trademark application alone did not give priority over previous common law users).

Second, even if a pending trademark application was sufficient to establish Complainant’s rights in the RAZORBOX mark, Respondent’s registration of the <razorbox.com> domain name predates Complainant’s alleged rights. Complainant admits in its Complaint that it has been in business for two years and Complainant’s trademark application indicates a first use in commerce of January 15, 2002. However, Respondent registered the disputed domain name on December 10, 1999, more than two years prior to Complainant’s stated first use in commerce. Under these facts, the Panel must find in favor of Respondent because it would be impossible for Complainant to prove Respondent’s bad faith registration subsequent to Complainant establishing any rights in the RAZORBOX mark. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (stating that “We are of the unanimous view that the trademark must predate the domain name”).

Thus, the Panel finds that Complainant has failed to satisfy its burden of proof with regard to Policy ¶ 4(a)(i). Because Complainant is required to satisfy each of the three elements listed under Policy ¶ 4(a), the Panel need not pursue the analysis of Policy ¶¶ 4(a)(ii) or (iii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when Respondent does file a Response, Complainant must allege facts, which if true, would establish that Respondent does not have any rights or legitimate interests in the disputed domain name).

DECISION

Having failed to establish all three elements required under ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <razorbox.com> domain name REMAIN with Respondent.

Sandra Franklin, Panelist

Dated: May 9, 2003