DECISION

Scooter Planet v. Edward V. Curley IV

Claim Number:  FA0407000297926

PARTIES

Complainant is Scooter Planet (“Complainant”), represented by Ronald N. Serota, 2620 Regatta Drive, Suite 102, Las Vegas, NV 89128.  Respondent is Edward V. Curley IV  (“Respondent”), 72 Pane Road, Newington, CT 06111.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <scooterplanet.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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 16, 2004; the Forum received a hard copy of the Complaint on August 2, 2004.

On July 21, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <scooterplanet.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 August 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 2004 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@scooterplanet.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 September 9, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 <scooterplanet.com> domain name is identical to Complainant’s SCOOTER PLANET marks.

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

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

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

FINDINGS

Complainant, Scooter Planet, is a franchise business for the sale of Scooter Planet stores. Scooter Planet stores provide rental and retail sales of scooters, motorcycles, all-terrain vehicles, personal watercraft, snowmobiles, bicycles and other recreational and related equipment and accessories. Scooter Planet was incorporated in Nevada on Sept. 22, 2003 and has been offering franchises for sale since January 2004. Complainant first used the SCOOTER PLANET mark in commerce on January 6, 2004.

Complainant applied for trademark registrations with the United States Patent and Trademark Office for the SCOOTER PLANET mark (Reg. No. 78,370,197, filed on Feb. 18, 2004 and Reg. No. 78,375,034, filed on Feb. 26. 2004). Complainant’s application for a trademark registration has not yet been accepted.

Respondent registered the <scooterplanet.com> domain name on Sept. 14, 1999 and is not using the domain name in any manner.

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

The <scooterplanet> domain name is clearly identical to Complainant’s SCOOTER PLANET mark. However, to satisfy Policy ¶ 4(a)(i), Complainant must first establish rights in the mark.

Complainant applied for trademark registrations for the SCOOTER PLANET mark in February 2004, but Complainant’s application has yet to mature into an official registration.  An application for a trademark has been found insufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). Thus, Complainant has failed to establish rights in the SCOOTER PLANET mark under the Policy.  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 Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (finding that Complainant did not establish the requisite trademark or common law rights to grant Complainant the necessary standing for the Panel to find in its favor as Complainant’s pending trademark application did not, in and of itself, demonstrate trademark rights in the mark applied for); see also Worldwide Creations, L.L.C. v. Shawah, FA 263421 (Nat. Arb. Forum June 17, 2004) (“For the purposes of the Policy, trademark registration applications do not give rise to trademark rights.”).

Complainant must establish all three elements to succeed on a claim under the Policy.  Complainant has failed to establish Policy ¶ 4(a)(i), thus it is unnecessary for the Panel to examine the remaining elements of the Policy. 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 elements unnecessary); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent’s default does not automatically lead to a ruling for Complainant).

Registration and Use in Bad Faith

While the Panel need not examine this element, it would be impossible for Complainant to prove Respondent registered and used the <scooterplanet> domain name in bad faith pursuant to Policy ¶ 4(a)(iii), since by Complainant’s own admission, Complainant did not even exist, much less market its products and use them in commerce until four years after Respondent registered the disputed domain name. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent registered the domain prior to Complainant’s use of the mark); 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 Complainant's company did not exist at the time of registration).

DECISION

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 <scooterplanet.com> domain name REMAIN WITH Respondent.

John J. Upchurch, Panelist

Dated:  September 23, 2004

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