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The Village L.L.C. v Metricom Inc. [2003] GENDND 5 (3 January 2003)


National Arbitration Forum

DECISION

The Village L.L.C. v Metricom Inc.

Claim Number: FA0211000133754

PARTIES

Complainant is The Village L.L.C., Great Falls, VA, (“Complainant”).  Respondent is Metricom Inc., Los Gatos, CA, (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thevillage.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 Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 15, 2002; the Forum received a hard copy of the Complaint on November 18, 2002.

On November 22, 2002,  Network Solutions Inc. confirmed by e-mail to the Forum that the domain name <thevillage.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 November 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 12, 2002 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@thevillage.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 December 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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

1. Respondent’s <thevillage.com> domain name is identical to Complainant’s common law THE VILLAGE mark.

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

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

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, The Village L.L.C., was organized as a limited liability company under the laws of the State of Virginia on October 4, 2002. Complainant offers services to professional women who are single and pregnant, such as providing a place to live during the pregnancy and for a few months thereafter. Complainant also provides meals, childcare, speakers on topics of interest, and other related services.

Complainant’s limited advertising has included posting advertisements at local businesses and restricted advertising in two local newspapers. Complainant does not host a website because it would “like to use <thevillage.com> as the web site address.”

Complainant does not have a registered trademark for THE VILLAGE and does not have an application pending.

Respondent registered <thevillage.com> on May 5, 1995. The website has not been used in the seven plus years since registration. Respondent does not have a registered trademark for THE VILLAGE and does not have an application pending. 

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 the 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 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 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 submitted a reply to Complainant’s allegations, thereby permitting the Panel to conclude that all reasonable inferences made by Complainant are true and accurate unless there is evidence that is clearly contradictory.  Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true);  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).

Even if the Panel accepts all assertions made by Complainant as true, Complainant has not overcome its initial burden of proof and therefore has not demonstrated the requisite prima facie case under the ICANN Policy. Policy ¶ 4(a)(i) specifically states that a complainant must prove that the disputed domain name is identical or confusingly similar to a mark in which it has rights. Complainant has not shown that THE VILLAGE mark, in only two months, has gained secondary meaning as to associate the alleged mark with the provider of these services. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 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”); see also FRH Freies Rechenzerntrum v. Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that Complainant has not proven by a preponderance of the relevant, admissible, and credible evidence that the domain name in question is identical to a trademark in which Complainant has rights despite Complainant’s mark being the dominant feature of Complainant’s trade name).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has not been satisfied.

Rights or Legitimate Interests

This section need not be addressed given that Complainant has not proven that THE VILLAGE is a mark in which it has rights.

Registration and Use in Bad Faith

This section need not be addressed given that Complainant has not proven that THE VILLAGE is a mark in which it has rights.

However it is worth mentioning that it would be impossible for Complainant to show that its rights precede that of Respondent. The <thevillage.com> domain name was registered over seven years ago in all probability because of its apparent generic value. At the time of registration, there was no indication of Complainant’s purported interest in the THE VILLAGE mark. Therefore, even if Complainant could prove rights in THE VILLAGE mark, the rights were not vested prior to the time the domain name was registered. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“We are of the unanimous view that the trademark must predate the domain name”); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding that it is impossible for Respondent to register disputed domain name in bad faith if the Complainant's company did not exist at the time of registration).

DECISION

The Panel hereby concludes that the requested relief shall be DENIED.

Accordingly, it is ordered that the Complaint be DISMISSED and the domain name  <thevillage.com> SHALL NOT be transferred.

Tyrus R. Atkinson, Jr., Panelist

Dated: January 3, 2003


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