|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Ikram Goldman v. Dotcorner.com c/o Domain
Administrator
Claim Number: FA0411000362420
PARTIES
Complainant
is Ikram Goldman (“Complainant”),
represented by Oscar L. Alcantara, 55 East Monroe, Suite 3700, Chicago,
IL 60603. Respondent is Dotcorner.com c/o Domain Administrator (“Respondent”),
represented by Aamir Siddiqi, H-77, K.D.A. Staff Flats, Near Karsaz,
Karachi, Sindh 75350, PAKISTAN.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <ikram.com>,
registered with Enom, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
David
S. Safran as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
10, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 11, 2004.
On
November 11, 2004, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <ikram.com>
is registered with Enom, Inc. and that the Respondent is the current registrant
of the name. Enom, Inc. has 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
November 16, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”),
setting a deadline of December 6,
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@ikram.com by e-mail.
A
timely Response was received and determined to be complete on December 6, 2004.
Timely
additional submissions were received from Respondent and Complainant on
December 6, 2004 and December 13, 2004, respectively.
On December 13, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David S. Safran as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that Respondent’s domain name and Complainant’s mark are confusingly
similar, the domain <ikram.com> differing from Complainant’s IKRAM
mark only by the “.com” top-level domain (“TLD”). Furthermore, Complainant asserts that Respondent does not have a
legitimate interest in the domain name since Complainant believes
that
Respondent has made no legitimate trademark use of the word “ikram,” has not
used the name “ikram” in association with any business
and is not known by that
name. Additionally, Complainant contends that Respondent’s bad faith in
registration and use of the domain
<ikram.com> is demonstrated by
the use of the domain as a means to channel Internet users to companies and/or
websites that compete directly
with Complainant’s goods and services.
B.
Respondent
Respondent
acknowledges that Complainant’s mark corresponds to that of the domain without
the TLD, but indicates that it is not being
used in a trademark sense. Respondent further contends that it has a
legitimate interest in the domain name since it is a common name and that it
has been used
continuously for four years in association with the business
conducted via the website at the <ikram.com> domain name and that
the domain could not have been registered in bad faith since Respondent had no
knowledge of Complainant and
since Complainant’s registration did not issue
until years after Complainant’s registration of its mark and the date of first
use
set forth in the registration.
C.
Additional Submissions
Complainant
has provided an additional submission which sets forth that Complainant is
attempting to have the dates of first use in
its registration corrected, that
Complainant did not institute UDRP proceedings sooner since Complainant only
became aware of the
use of the domain name a few months before instituting of
this proceeding, that evidence submitted with Complainant’s Additional
Submission
establishes that Complainant’s use of the IKRAM marl predates registration of
the <ikram.com> domain name and that that use was well know in the
trade.
FINDINGS
The panel finds that Complainant has
failed to establish that it had acquired rights in its name until after
Respondent registered
the domain name <ikram.com>
on November 20, 2000, or that Respondent, a resident of Pakistan, had any
knowledge of Complainant. Furthermore,
the panel finds that “ikram” is primarily merely a common first name, a fact
evident from materials submitted by Complainant
and verified by a Google®
search of the term “ikram.” As a
result, the panel finds that Respondent did not register the domain name <ikram.com> with knowledge of
any claim of Complainant regarding the term “IKRAM” and that, as a common first
name, had a legitimate right to
use same in its domain name.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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.
No determination is deemed necessary in
view of the determination of a lack of bad faith below.
No determination is deemed necessary in
view of the determination of a lack of bad faith below.
The Panel finds that a finding of bad
faith pursuant to Policy ¶ 4(a)(iii) is impossible because Respondent’s use of
the disputed
domain name predates Complainant’s established rights in the
mark. 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 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 Open Sys. Computing AS v. degli Alessandri,
D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where Respondent
registered the domain name in question before application
and commencement of
use of the trademark by Complainant).
Additionally, the Panel finds that there
was no bad faith registration or use under Policy ¶ 4(a)(iii) since Respondent
selected and
registered the <ikram.com> domain name in good faith
in connection with a fair business interest, and that no likelihood of
confusion has been established. See Schering AG v. Metagen GmbH, D2000-0728
(WIPO Sept. 11, 2000) (finding that Respondent did not register or use the
domain name <metagen.com> in bad faith
where Respondent registered the
domain name in connection with a fair business interest and no likelihood of
confusion was created);
see also DJF
Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1,
2000) (finding Respondent has shown that it has a legitimate interest in the
domain name because
Respondent selected the name in good faith for its website,
and was offering services under the domain name prior to the initiation
of the
dispute).
Furthermore, the panel finds that the
mark is a common first name and not fanciful or arbitrary as Complainant
claims, and that Complainant’s
use of only its first name in the manner of the
performer Cher, does not in and of itself change that fact. Thus, the Panel concludes that since the
IKRAM mark is not inherently distinctive and sufficient evidence of secondary
meaning, as
of the time that the <ikram.com> domain name was
registered, has not been evidenced, Respondent did not register the domain name
in bad faith pursuant to Policy ¶
4(a)(iii). See Larson v. Judy Larson
Club FA96488 (Nat. Arb. Forum Mar.
13, 2001) (“where a person’s name is not being used as an indicator of the
origin of his or her goods or services,
or if the person’s stage name also is,
and is being used as, a common word of ordinary vernacular, the person’s name
is not the subject
of protectable rights under the UDRP.”); see also Sumner
v. Urvan, D2000-0596 (WIPO July 24, 2000) ("Although it is accepted
that the Complainant is world famous under the name STING, it does
not follow
that he has rights in STING as a trademark or service mark. … [T]he
personal name in this case is also a common word in the English language, with
a number of different meanings.").
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 <ikram.com>
domain name be retained by Respondent.
David S. Safran, Panelist
Dated: December 27, 2004
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1527.html