WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gookinaid ERG, Inc. v. Valda Krievane
Case No. D2008-0487
1. The Parties
The Complainant is Gookinaid ERG, Inc., of San Diego, California, United States of America, represented by Aaron M. Fennimore, United States of America.
The Respondent is Valda Krievane, of Latvia.
2. The Domain Names and Registrar
The disputed domain names <gookinaid.biz> and <gookinaid.com> are registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2008. On March 31, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On March 31, 2008, Wild West Domains, Inc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2008. The Response was filed with the Center on April 29, 2008. That day, the Complainant sought leave to submit a Reply to the Response.
Also on April 29, 2008, a submission entitled “Response” was received by the Center from iNETready Communications, Inc., of California, United States of America, describing itself as “Interested Third Party/Prior Registrant”.
The Center appointed Alan L. Limbury as the sole panelist in this matter on May 5, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On May 9, 2008, the Complainant objected to the Panel having regard to the “Response” of the third party and submitted that, were the Panel to do so, the Complainant should be permitted to submit a Reply to it.
Before deciding whether to consider the third party’s “Response” and whether Complainant should be allowed to reply to it, on May 14, 2008, by Procedural Order No. 1, the Panel requested the Complainant to provide a copy of the pleadings in the court case in the United States of America involving the third party and the Complainant, mentioned in the Complaint. The projected due date for Decision was extended to May 28, 2008.
The Complainant provided a copy of the pleadings in the court case on May 16, 2008.
Having considered the Complaint, the Response and the pleadings in that court case, the Panel finds it unnecessary to consider the “Response” from the third party nor the circumstances under which the domain name registrations were transferred from the third party to the Respondent. Further, although the court case concerns the domain names that are presently in dispute in this administrative proceeding, the Panel has decided to proceed to a decision, in the exercise of its discretion, pursuant to the Rules, paragraph 18(a).
The Panel also declines to permit the Complainant to submit a Reply to the Response, since there is nothing in the Response relevant to the Panel’s decision, which is based on the content of the Complaint.
The language of the proceeding is English.
4. Factual Background
The Complainant sells electrolyte replacement products.
The domain names <gookinaid.com> and <gookinaid.biz> were created respectively on January 9, 1998 and January 11, 2005.
5. Parties’ Contentions
The Complainant asserts that it is “the owner of all right, title and interest in and to the tradenames and trademarks GOOKINAID and GOOKINAID ERG for use with its electrolyte replacement products” and that under the tradename/trademark GOOKINAID, it sells such products using the trademarks HYDRALYTE (No. 78137271, registered on May 16, 2006) and VITALYTE (registration pending). It says world class marathon runners have been drinking beverages using the GOOKINAID tradenames/trademarks since the late 1970s and that the Complainant has extensively promoted those tradenames/trademarks.
The Complainant seeks the transfer to it of the disputed domain names, contending that they are identical or confusingly similar to the Complainant’s GOOKINAID tradenames/trademarks and that the Respondent has no rights or legitimate interests in the domain names, which were registered and are being used in bad faith.
Pursuant to the Rules, paragraph 3(b)(xi), the Complainant says it is currently engaged in a pending lawsuit in the Superior Court of California, County of San Diego, with the prior registrant of the domain names in question, the Complainant’s former web host. The lawsuit stems from the Complainant’s prior relationship with the web host and is unrelated to the Respondent’s current registration and use of those domain names.
The Respondent asks the Panel to deny the remedies sought by the Complainant and to restore registration to the third party, iNETready Communications, Inc., as it was illegally transferred to the Respondent’s name. The Respondent has no knowledge of how the registration came to be in the name of Valda Krievane and would willingly co-operate in restoring such registration to the third party.
The Respondent is unaware of any potential for confusion; claims no interest in the domain names; is not a competitor of the Complainant and claims, together with the third party, to be the victim of illegal Internet “phishing”.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent: British Heart Foundation v. Harold A Meyer III (eResolution Case No. AF0957).
Here the Complainant has asserted that it has acquired common law rights in the GOOKINAID and GOOKINAID ERG marks and it has made reference to instances of such claimed use over many years. However, it has submitted no evidence in support of its assertions.
According to the Complaint, Annex C reproduces assorted web pages printed on March 28, 2008 from the disputed domain names. Those web pages depict products bearing the word “Gookinaid” and in larger print the mark HYDRALYTE. There is a statement in fine print: “Gookinaid Hydralyte is a registered trademark of Gookinaid ERG”. This appears to conflict with the claim in the Complaint that the Complainant’s registered mark is HYDRALYTE.
The Panel is not prepared to infer, from the Respondent’s web pages printed out on March 28, 2008, that the Complainant has acquired, through many years of use, common law trademark rights in GOOKINAID or GOOKINAID ERG.
It follows that the Complainant has failed to establish the pre-requisite for any relief under the Policy, namely that it has a trademark to which the disputed domain names are identical or with which they are confusingly similar.
No analysis of the elements of legitimacy and bad faith is necessary.
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Dated: May 28, 2008