5th Feb 2009

 

National Arbitration Forum

 

DECISION

 

Creative Imaginations, LLC v. CKV c/o Domain Administrator

Claim Number: FA0810001230190

 

PARTIES

Complainant is Creative Imaginations, LLC (“Complainant”), represented by Donald E. Morris, of Dozier Internet Law, PC, Virginia, USA. Respondent is CKV c/o Domain Administrator (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <creativeimaginations.com>, registered with Nameview, Inc.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

David A. Einhorn, Esq., Joel M. Grossman, Esq. and James A. Carmody, Esq., (Chair) as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 21, 2008.

 

On October 30, 2008, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <creativeimaginations.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 24, 2008 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@creativeimaginations.com by e-mail.

 

A timely Response was received and determined to be complete on November 24, 2008.

 

On December 1, 2008, Complainant and Respondent jointly filed their “Joint Request to Stay the Administrative Proceeding.” On December 1, 2008, the National Arbitration Forum granted this Request for a period of forty-five days until January 15, 2009 pursuant to Supplemental Rule 6(b)(i).

 

On January 14, 2009, Complainant filed its “Request to Continue the Administrative Proceeding.” On January 14, 2009, the National Arbitration Forum thereby granted this Request, and the administrative proceeding resumed.

 

On January 23, 2008, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David A. Einhorn, Esq., Joel M. Grossman, Esq. and James A. Carmody, Esq., (Chair) as Panelists.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

            A. Complainant makes the following assertions:

 

1.      Respondent’ <creativeimaginations.com> domain name, the domain name at issue, is confusingly similar to Complainant’s CREATIVE IMAGINATIONS mark.

2.      Respondent does not have any rights or legitimate interests in the domain name at issue.

3.      Respondent registered and used the domain name at issue in bad faith.

 

            B. Respondent makes the following assertions:

 

1.      Respondent denies that the domain name is identical or confusingly similar to a mark in which Complainant has exclusive rights and asserts that the domain name at issue is composed of generic terms.

2.      Respondent claims rights and legitimate interests in the domain name at issue.

3.      Respondent denies that it has registered or used the domain name at issue in bad faith.

4.      Respondent asks the Panel to find that Complainant is guilty of reverse domain name hijacking.

 

FINDINGS

Complainant is the owner of the trademark CREATIVE IMAGINATIONS which it succeeded in registering with the USPTO on October 10, 2006 as Registration Number 3,153,435. In the application to register, Complainant claimed first use and first use in commerce of January 1, 1986. The use is to identify Complainant’s products including adhesive stickers and specialty papers of various types. There is no offering of evidence that Complainant has held a common law trademark in CREATIVE IMAGINATIONS at any time or that the mark had achieved secondary meaning in the mind of the public prior to registration.

 

Complainant argues that Respondent’s <creativeimaginations.com> domain is identical or confusingly similar to its CREATIVE IMAGINATIONS mark and notes that Respondent is not commonly know by the domain name at issue and has not been licensed or otherwise authorized to use Complainant’s registered trademark. Finally, Complainant asserts that Respondent registered and is using the domain name at issue in bad faith for financial gain by serving to redirect Internet users who are searching for Complainant’s mark to Respondent’s website which, in turn, displays advertisements for the goods and services of various third-party suppliers. Complainant does not appear to claim that those third-party suppliers are its competitors.

 

Respondent notes that it registered the <creativeimaginations.com> domain in May of 2001, nearly four years prior to the application date to register CREATIVE IMAGINATIONS in January of 2005. Further, Respondent denies any knowledge of Complainant’s mark prior to registration of the domain and notes that Complainant has not shown any evidence of common law trademark rights prior to May of 2001 or at any time. Accordingly, Respondent says that it has every legitimate right to use the domain as it does and that it could not have resgistered or used the <creativeimaginations.com> domain in bad faith.

 

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.

 

 

Registration and Use in Bad Faith

 

It is not necessary for the Panel to make findings on the first two elements of the Policy since Complainant has clearly failed to show registration and use in bad faith on the part of the Respondent. America Online, Inc. v. GSD Internet, D2001-0629 (WIPO Jun. 25, 2001). At no point in time since 1986, which Complainant alleges first use of the CREATIVE IMAGINATIONS mark in commerce, has the Panel been shown any proof that Complainant has held common law trademark rights in the mark in question. It is not disputed that Respondent registered the <creativeimaginations.com> domain nearly four years prior to Complainant’s application to register the CREATIVE IMAGINATIONS mark with the USPTO. Accordingly, a strong argument might be made that Complainant has failed to satisfy even the first element of the Policy in that its rights may be junior to those of Respondent. However, it is even more clear that Respondent could not have registered and is not using its <creativeimaginations.com> domain name in bad faith.

 

Accordingly, Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

 

            Accordingly, Complainant has failed to satisfy Paragraph 4(a)(iii) of the Policy.

 

Reverse Domain Name Hijacking

 

The Panel declines to make a finding of reverse domain name hijacking on the part of Complainant.

 

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

 

James A. Carmody, Esq., (Chair)

David A. Einhorn, Esq.

Joel M. Grossman, Esq.

Dated: February 5, 2009

 

National Arbitration ForuM