DECISION

Quiksilver Inc. v. Official Site Builders

Claim Number:  FA0303000147308

PARTIES

Complainant is Quiksilver Inc., Huntington Beach, CA (“Complainant”) represented by Janie L Dodge of Quiksilver Inc. Respondent is Official Site Builders, Reach Millions, WV (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <veronicakay.com>, registered with Enom, Inc.

PANEL

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

Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 28, 2003; the Forum received a hard copy of the Complaint on March 3, 2003.

On March 4, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <veronicakay.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, 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 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 31, 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@veronicakay.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 April 7, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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. The domain name registered by Respondent, <veronicakay.com>, is identical to the name of a surfer that Complainant sponsors, VERONICA KAY.

2. Respondent has no rights to or legitimate interests in the <veronicakay.com> domain name.

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

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

FINDINGS

Complainant sponsors Veronica Kay, who is alleged to be a world famous professional surfer.  Complainant notes that Veronica Kay has been featured in many magazines including:  Seventeen, Teen People, SG, Surfer, Surfing Girl, Men’s Journal, MH, Sports Fitness and Maxim.  Ms. Kay had a comprehensive layout in the August 2001 Maxim, which consisted of six pages.   Complainant also notes that Ms. Kay has been featured in a segment on the E! Channel. 

Complainant submits that Vanessa James, Ms. Kay’s mother, granted it authority to act on Ms. Kay’s behalf regarding the <veronicakay.com> domain name.  Complainant provides an affidavit from Vanessa James that supports Complainant’s authority regarding legal action in connection with the <veronicakay.com> domain name.  In the affidavit, Vanessa James purports to have power of attorney for Ms. Kay. 

Respondent registered the domain name September 8, 2002.  Respondent does not actively use the domain name.  Complainant has tried to contact Respondent numerous times to request that the domain name be transferred over to Complainant but has received no response from Respondent. 

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 will draw such inferences as the Panel 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

Complainant alleges that Veronica Kay is a world famous surfer.  However, Complainant provides nothing but a few magazine stories and pictures to substantiate that statement.  No evidence provides proof of Veronica Kay’s surfing credentials.  Without demonstrating evidence of Veronica Kay’s professional achievements, the Panel cannot determine the value of her name as a trademark or trade name. 

An individual can hold common law rights in his or her name if a reputation is established evidencing secondary meaning in the name itself.  See Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding that a “person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law”).  Complainant, however, has a duty to establish at least secondary meaning with reliable and credible evidence.  See TotalFinaElf E&P USA, Inc. v. Farnes, NAF 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that in order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s initial burden is to provide proof of “valid, subsisting rights in a mark that is similar or identical to the domain name in question”).  In this dispute, Complainant merely refers to Veronica Kay’s magazine features, which does not suffice to establish secondary meaning. 

Complainant does provide exhibits with pictures of Veronica Kay and various other female surfers but such exhibits alone do not prove that Veronica Kay has acquired secondary meaning in her name.  Some of the submissions are stories about Veronica Kay and are essentially narrative, relaying to the reader how Veronica Kay became a surfer and model.  These exhibits do not demonstrate secondary meaning, nor do they establish the value that the name Veronica Kay holds as a trademark. 

The Panel finds that Complainant has not fulfilled the burden of establishing common law rights in the name Veronica Kay, which is admittedly identical to the <veronicakay.com> domain name.  Thus, Policy ¶ 4(a)(i) has not been satisfied. 

Rights or Legitimate Interests

Assuming Complainant satisfied Policy ¶ 4(a)(i), Complainant’s submission fails to evoke any circumstances that demonstrate Respondent’s lack of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii).  At a minimum, Complainant must allege facts that establish a basis for finding that Respondent has no rights or legitimate interests in the domain name.  See 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 has no rights or legitimate interests in the disputed domain name). 

It is true that Respondent does not use the domain name for an active website, but Complainant has not argued passive holding in the context of a lack of rights or legitimate interests.  Furthermore, Respondent has only held the registration rights since September 2002, and thus such a finding would be tenuous.  Thus, the Panel finds that Complainant’s submission lacks sufficiency to surpass Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Because Complainant has not surpassed either of the first two elements of the Policy, the Panel need not adjudicate bad faith registration and use.  However, the Panel notes that Complainant’s Policy ¶ 4(a)(iii) arguments are just as insufficient as its Policy ¶ 4(a)(ii) assertions.  Complainant has not alleged any improper use of the domain name but merely relies on Respondent’s failure to reply to correspondence to establish bad faith.  In order to establish bad faith use, Complainant must present factual circumstances establishing the use of the domain name.   Since Complainant has failed to allege actual improper use, the Panel finds that Complainant failed to establish bad faith under Policy ¶ 4(a)(iii).  See PRL USA Holdings, Inc. v. Polo, D2002-0148 (WIPO April 29, 2002) (finding that because Complainant failed to provide any factual allegations as to the nature of use of the disputed domain name, Complainant failed to prove that the Respondent’s domain names were being used in bad faith). 

Furthermore, Complainant avers that the “domain name was registered for the purpose of obtaining illegitimate financial gain from other companies by re-directing consumers to their web sites.”  However, as previously mentioned, Complainant provides no evidence of such use.  The record does not demonstrate that Respondent uses the domain name in question for any active purpose.  Complainant merely speculates as to Respondent’s intended use of the domain name – guesswork that does not establish or support a conclusion of bad faith registration or use.  See Loris Azzaro BV, SARL v. Asterix & De Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence”).

The Panel finds that Complainant failed to satisfy Policy ¶ 4(a)(iii). 

DECISION

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

Accordingly, it is Ordered that the <veronicakay.com> domain name registration shall remain with Respondent.

Hon. Carolyn Marks Johnson, Panelist

Dated: April 16, 2003.

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