WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

DuWop, LLC v. Jayson Online

Case No. D2001-1315

 

1. The Parties

The Complainant is DuWop, LLC, a limited liability corporation organized in the State of California, United States of America (USA), with place of business in Glendale, California, USA.

The Respondent is Jayson Online, with address in New York, New York, United States of America (USA).

 

2. The Domain Name and Registrar

The disputed domain name is <duwop.com>.

The registrar of the disputed domain name is Tucows, Inc., with business address in Toronto, Ontario, Canada.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on October 30, 2001, and by courier mail, received by WIPO on November 2, 2001. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On November 7, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Tucows, Inc. (with the Registrarís Response received by WIPO on November 8, 2001).

(b) On November 9, 2001, WIPO transmitted Notification of the Complaint and Commencement of the Administrative Proceeding to Respondent via e-mail and courier mail.

(c) On November 9, 2001, Respondent transmitted via e-mail to WIPO a request for information on responding to the complaint, to which WIPO replied via e-mail. Respondentís e-mail included a single sentence statement in his defense. Respondent did not subsequently furnish a formal response.

(d) On November 30, 2001, WIPO transmitted notification to Respondent of his default in responding to the complaint via e-mail.

(d) On December 4, 2001, WIPO invited the undersigned to serve as Panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On December 4, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(e) On December 5, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by December 19, 2001. On December 5, 2001, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

 

4. Factual Background

Complainant filed an intent to use ("ITU") application for registration of the typed drawing trademark and service mark "DUWOP" at the United States Patent and Trademark Office (USPTO), serial number 75779650, dated August 20, 1999, covering cosmetic products (as further specified) and design of cosmetic products (as further specified). That application asserts a date of first use of the mark of August 20, 1999, and a date of first use in commerce of the mark of August 20, 1999. The proposed mark was published for opposition on December 26, 2000, and a notice of allowance was subsequently issued. As of October 24, 2001, a non-final refusal of the Statement of Use filed for this application had been mailed to Complainant by the USPTO. Complaint, para. 12(iii) and Annex 3 (TESS printout of status of application).

In its complaint, Complainant asserts use of the "DUWOP" mark in connection with the marketing and promotion of cosmetic and beauty products "at least as early as March, 1999" (Complaint, para. 12 (iii)). In April 2001, Complainant launched a commercial website at Internet address (URL) <www.duwoponline.com>. Complainant asserts that it has extensively advertised under the "DUWOP" mark in print, at trade shows and on its website. Id., para. 12(iv).

Complainant asserts that "Respondent initially registered the Domain Name on July 6, 1999 with Network Solutions. At that time, he orally represented to Complainant that he was registering the Domain Name Ďon behalf ofí Complainant." Id., para. 12(x).

Complainant (via counsel) has sent cease and desist and transfer demands to Respondent, to which Respondent has not replied (id., para. 12(xii) & Annex 8). The demand letter furnished by Complainant evidencing these efforts makes no reference to prior discussions with Respondent (id., Annex 8). Complainant asserts no prior business relationship with Respondent.

According to the registrarís verification response to WIPO, dated November 8, 2001, Respondent is the listed registrant of the disputed domain name <duwop.com>. The Administrative Contact, at the same address, is "Kim, Jayson". According to a printout of a Tucows WHOIS database search furnished by Complainant, the record for the disputed domain name was created on July 6, 1999, and was last updated on October 29, 2001.

As of October 29, 2001, the disputed domain name <duwop.com> resolved to a standard form notice of registration with "SiteReserve.com". There is no indication in the record of this proceeding that Respondent has ever maintained an active website using the disputed domain name. Complaint, Annex 10.

The Service Agreement in effect between Respondent and Tucows, Inc. subjects Respondent to Tucows, Inc.ís dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).

 

5. Partiesí Contentions

A. Complainant

Complainant asserts that it has filed an application to register the trademark and service mark "DUWOP which has been approved for registration by the U.S. Patent and Trademark Office." Complainant asserts that even if trademark registration has not been granted, "DUWOP" has achieved trademark status because the public associates its products with this mark. Complainant refers to the prior administrative panel decision, Atlantic Recording Corporation v. Paelle International, WIPO Case No. D2001-0065, in support of its argument that a trademark may exist in the absence of completed registration.

Complainant states that the disputed domain name is identical to its mark, and confusingly similar to its <duwoponline.com> domain name.

Complainant argues that Respondent has not demonstrated rights or legitimate interests in the disputed domain name. Inter alia, Respondent has made no active use of the name and has failed to respond to Complainantís cease and desist demands.

Complainant asserts that Respondent registered and has used the disputed domain name in bad faith. This is said to be evidenced by Respondentís lack of legitimate plans to use the name. Respondent is also alleged to have provided false contact information by using the name "Jayson Online" to register the name, making it more difficult for Complainant to reach him.

B. Respondent

Respondent did not file a formal response to the Complaint. However, in his e-mail to WIPO of November 9, 2001, he said: "I donít understand how this organization can challenge the domain name rights when their trademark occurred after my registration date."

 

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a formal reply is not due to any omission by WIPO. Respondent sent an e-mail message to WIPO indicating that he had received notice of the complaint. Moreover, in the interests of due process, the Panel has taken note of Respondentís query regarding the legal status of Complainantís asserted mark in relation to the disputed domain name.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Complainant has filed an application for registration of the mark "DUWOP" with the USPTO. No registration has yet been issued [1]. Complainantís asserted mark does not enjoy a presumption of secondary meaning under federal law based on registration [2].

Common law rights in a trademark or service mark may arise under the federal Lanham Act or state law [3], and a substantial number of decisions by administrative panels under the Policy have been based on common law trademark or service mark rights [4].

In this proceeding, Complainantís application for registration with the USPTO was filed as an "intent to use" (ITU) application [5]. If the USPTO grants registration of Complainantís mark based on evidence of use Complainant furnishes, Complainant will enjoy "constructive use" of the mark dating from the filing date of the ITU application [6] . In this case, the filing date of Complainantís ITU application was August 20, 1999. As of October 24, 2001, the status of Complainantís application was that the USPTO had sent it a non-final refusal of the Statement of Use filed to secure registration. Complainant has not offered any explanation of the notice of non-final refusal.

Respondent registered the disputed domain name on July 6, 1999. This is prior to the date of first use of the mark claimed by Complainant (i.e., August 20, 1999) in its ITU application, and the date of filing the application for trademark registration (i.e., August 20, 1999). Complainant could not have acquired common law trademark rights prior to use of the mark in commerce. While Complainant asserts in its complaint that it began to use the mark in March 1999, it does not explain the discrepancy with its application at the USPTO. Even as of October 2001, Complainant had not satisfied the USPTO that it has used the mark in commerce.

The Panel need not decide whether Complainant presently has common law trademark or service mark rights in "DUWOP". Even if it has by now developed common law rights in the mark, the record indicates that it did not have such rights as of the date Respondent registered the disputed domain name. Even if Complainantís mark is subsequently registered based on its ITU application, the date of its constructive use of the mark will be later than the date Respondent registered the disputed domain name.

Because Complainant did not have rights in the mark "DUWOP" at the time Respondent registered the disputed domain name, Respondent did not register the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) and 4(b) of the Policy. Because Complainant did not have rights in a mark at the time of Respondentís domain name registration, Respondent did not intend to interfere with or take advantage of Complainantís rights in its mark. Complainant had no rights in a mark at the relevant time.

Complainant has referred to the administrative panel proceeding, Atlantic Recording Corporation v. Paelle International, WIPO Case No. D2001-0065, in support of its position. In that case, the complainant was owner of a well-known mark in use since 1949, owned trademark registrations at the USPTO, and owned over 100 registrations in countries outside the United States. Apparently the mark was not registered in Mexico, the place of business of the respondent in that case. The panel held that the complainant had adequate rights in its well-known mark to support its claim against the respondent in Mexico. In that case, the respondent registered the disputed domain name long after the complainant had acquired rights in its mark. That decision does not support Complainantís position in this proceeding.

Because Complainant has failed to establish rights in a mark at the time Respondent registered the disputed domain name, the Panel finds that Respondent did not register the disputed domain name in bad faith. The Panel therefore rejects Complainantís request to order the registrar to transfer the disputed domain name to it.

 

7. Decision

The Panel determines that Complainant, Duwop, LLC, has failed to establish that Respondent, Jayson Online, registered and used the disputed domain name, <duwop.com>, in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b) of the Policy. The Panel therefore rejects Complainantís request to order the registrar to transfer the disputed domain name to it.

 


 

Frederick M. Abbott
Sole Panelist

Dated: December 19, 2001

 


Footnotes:

1. See Factual Background, supra.

2. See 15 USCS ß 1057(b) (establishing presumption of exclusive right to use based on registration).

3. See, e.g., Century 21 Real Estate v. Billy Sandlin, 846 F.2d 1175 (9th Cir. 1988).

4. See, among others by this sole panelist, Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057, and; Desert Schools Federal Credit Union v. Symlink Communications, llc, WIPO Case No. D2001-0528.

5. See generally, J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition ß 19:13 (4th ed. 1996 and updated).

6. Id.