DECISION

Consumer InfoMedia a/k/a Philip Bruce v. Spac Anastasia

Claim Number:  FA0405000271163

PARTIES

Complainant is Consumer InfoMedia a/k/a Philip Bruce (“Complainant”), 2823 Camino Del Mar #72, Del Mar, CA 92014.  Respondent is Spac Anastasia (“Respondent”), Str. Puskina nr. 12, Kishinev-Bender, Moldova 32000, MD.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <goshopping.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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 12, 2004; the Forum received a hard copy of the Complaint on May 12, 2004.

On May 17, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <goshopping.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 May 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 7, 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@goshopping.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 June 16, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <goshopping.com> domain name is identical to Complainant’s GOSHOPPING.COM mark.

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

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

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

FINDINGS

Complainant, Consumer InfoMedia a/k/a Philip Bruce, alleges, without any details whatsoever, that it has owned the <goshopping.com> domain name for the last eight years with the intent of using it to set up a website that would promote sales through contracts with major shopping malls.  Presumably, Complainant is attempting to set up GO SHOPPING as a common law trade or service mark for purposes of this proceeding.

Before setting up the website (before any actual use of the “mark”) , Complainant transferred the <goshopping.com> domain name registration to Respondent for what it believed would be valuable consideration through and entity California Escrow Service, an online transaction verification service. According to the Complainant the Respondent falsely represented to the escrow service that the payments to Complainant for the disputed domain name had been made.  Although the domain name currently resolves to a website that is under construction, it is Complainant’s assertion that Respondent will likely use the website to attract Internet users for commercial gain and to conduct further fraudulent transactions.

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.

Procedural Issues

The dispute involves a business deal between a domain name holder that transferred its domain name registration for valuable consideration that was represented as paid, but was never actually paid, to the original domain name holder.  The Panel finds that the parties’ dispute is outside the scope of the Policy.  See Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations.’” Cases where registered domain names are subject to legitimate disputes are relegated to the courts); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 24, 2002) (determining that Complainant bears the burden of proof under the UDRP in stating “If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding”); see also Discover New England v. Avanti Group, Inc. FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the dispute outside the scope of the UDRP because the dispute centered on the interpretation of contractual language and whether or not a breach occurred).

Identical and/or Confusingly Similar

However, even if the dispute were within the scope of the Policy, Complainant has failed to establish all three required elements of the Policy.  Complainant has not established in this proceeding that it has rights in the GOSHOPPING mark through registration with the United States Patent and Trademark Office, continued use of the mark, or by showing that it has common law rights to the mark. Some serious question exists about the generic nature of the claimed mark.  Complainant once owned the registration for the domain name registration but has since transferred the domain name to Respondent.  Furthermore, while Complainant owned the registration for eight years, it has not yet used the domain name for its intended purpose and has made no showing that it conducted business using this domain name. Therefore, the Panel finds that Complainant has not established rights in the mark.  See Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (approving of and applying the principles outlined in prior decisions that recognized “common law” trademark rights as appropriate for protection under the Policy “if the complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant's goods or services”); see also Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000)  (finding that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning Complainant must show that the public identifies the source of the product rather than the product itself); 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).

The Panel finds that Policy ¶ 4(a)(i) has not been satisfied.

Since this dispute is clearly outside the scope of UDRP Policy and, further, since Complainant has failed to establish the first element of the Policy, it is unnecessary to address the claims under the remaining two elements.  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).

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 <goshopping.com> domain name REMAIN WITH Respondent.

James A. Carmody, Esq., Panelist

Dated:  June 30, 2004

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