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Generic Top Level Domain Name (gTLD) Decisions |
Flower Power LLC v. Horoshiy, Inc. a/k/a
Horoshiy
Claim
Number: FA0409000335360
Complainant is Flower Power LLC (“Complainant”), represented
by Oscar L. Alcantara, of Goldberg, Kohn, Bell, Black, Rosenbloom & Moritz, Ltd., 55 East Monroe Street, Suite 3700,
Chicago, IL 60603-3700. Respondent is Horoshiy, Inc. a/k/a Horoshiy (“Respondent”),
F.D. Rooseveltweg, #518, Curaco, AN.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <tapscotts.com>, registered with Nameking.com,
Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on September
24, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on September 27, 2004.
On
October 11, 2004, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <tapscotts.com> is
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified
that Respondent is
bound by the Nameking.com, 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
October 14, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 3, 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@tapscotts.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
November 17, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tapscotts.com>
domain name is confusingly similar to Complainant’s TAPSCOTT’S mark.
2. Respondent does not have any rights or
legitimate interests in the <tapscotts.com> domain name.
3. Respondent registered and used the <tapscotts.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
manufactures, distributes and sells artificial floral products under the
TAPSCOTT’S mark. Complainant and its
predecessor have continuously used the mark in commerce since as early as 1939
in connection with the sale and
promotion of artificial floral products.
Respondent
registered the domain name on January 13, 2004. The domain name is used to promote the products and services of
Complainant’s competitors.
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.
Complainant
asserts that it has established common law rights in the TAPSCOTT’S mark
through its continuous use of the mark in commerce
since 1939. Moreover, Complainant avers that it has
expended considerable time, money and resources developing, promoting and
advertising its
TAPSCOTT’S brand through various media in interstate
commerce. Furthermore, Complainant
contends that the mark has earned significant goodwill.
However,
Complainant failed to provide adequate evidence of common law rights in the
TAPSCOTT’S mark. The only evidence that
Complainant provided was an order form and excerpt from a 2004 catalogue. Complainant has failed to prove that
secondary meaning is established with the TAPSCOTT’S mark and therefore has
failed to establish
rights in a mark pursuant to Policy ¶ 4(a)(i). See Weatherford Int’ll, Inc. v. Wells, FA 153626
(Nat. Arb. Forum May 19, 2003) (stating that “[a]lthough Complainant asserts common law rights in the
WELLSERV mark, it failed to submit any evidence indicating extensive use or
that
its claimed mark has achieved secondary source identity . . . [a]lthough
Complainant’s WELLSERV product and related services may
be well-known among
relevant consumers, that is a finding that must be supported by evidence and
not self-serving assertions”); see also Cyberimprints.com, Inc. v.
Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that
Complainant failed to prove trademark rights at common law because it did
not
prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship
of goods or services or that there was strong
customer identification of the
mark as indicating the source of such goods or services).
Because
Complainant must prove all three elements under paragraph 4(a) of the Policy to
prevail in this proceeding, Complainant's
failure to prove Policy paragraph
4(a)(i) means that the Panel need not consider whether Complainant has proven
the remaining elements
contained in Policy paragraphs 4(a)(ii) and (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 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).
The Panel finds
that Policy ¶ 4(a)(i) has not been satisfied.
Having failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
November 29, 2004
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URL: http://www.worldlii.org/int/other/GENDND/2004/1409.html