8th Feb 2008
National Arbitration Forum
Susan Gonzales d/b/a Natural Edge v. Philip Ancevski
Claim Number: FA0711001112123
Complainant is Susan Gonzales d/b/a Natural Edge (“Complainant”), represented by James B. Belshe, of Workman Nydegger, 1000 Eagle Gate Tower, 60 East South Temple, Salt Lake City, UT 84111. Respondent is Philip Ancevski (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <naturaledge.com>, registered with Godaddy.com, Inc.
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.
Hon. Carolyn M. Johnson (Ret.), Diane Cabell, Esq., and James A. Carmody, Esq., (Chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 21, 2007.
On November 21, 2007, Godaddy.com, Inc confirmed by e-mail to the National Arbitration Forum that the <naturaledge.com> domain name is registered with Godaddy.com, Inc and that the Respondent is the current registrant of the name. Godaddy.com, Inc has verified that Respondent is bound by the Godaddy.com, 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 December 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 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 email@example.com by e-mail.
On December 31, 2007, Respondent requested an extension of twenty (20) days in which it could file a timely Response pursuant to NAF Supp. Rule 6. On January 2, 2008, the National Arbitration Forum granted Respondent’s request, and extended the Response deadline to January 14, 2008.
A timely Response was received and determined to be complete on January 14, 2008.
On January 23, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Carolyn M. Johnson (Ret.), Diane Cabell, Esq., and James A. Carmody, Esq., (Chair) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <naturaledge.com> domain, the domain name at issue, is confusingly similar to Complainant’s NATURAL EDGE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and has used the domain name at issue in bad faith.
1. Respondent does not dispute that the domain name at issue is identical or confusingly similar to Complainant’s NATURAL EDGE mark but claims that registration of the <naturaledge.com> domain preceded any common law or other rights which Complainant may have or have had in its mark.
2. Respondent claims that it has rights and legitimate interest in the domain names at issue because it was registered prior to registration of Complainant’s mark with the USPTO, prior to creation of a common law trademark and without Respondent’s actual knowledge of Complainant’s use of NATURAL EDGE in commerce.
3. Respondent denies that the domain name at issue was registered or has been used in bad faith.
Complainant claims to have been using the NATURAL EDGE mark in the United States and around the world since 2003 and to have invested substantially in the mark associated with the goods and services marketed under the NATURAL EDGE brand name. As a result, says Complainant, the NATURAL EDGE trademark, together with Complainant’s business name and reputation, has become synonymous with quality products and, accordingly, Complainant has built up considerable goodwill in the minds of consumers in connection with the NATURAL EDGE mark. Complainant has provided no specifics or proof of these claims by way of an affidavit, advertising samples or any other evidence of the existence of a common law trademark in NATURAL EDGE at any point in time. Complainant filed to register the NATURAL EDGE trademark with the U.S. Patent and Trademark Office on May 8, 2004 and claimed first use in commerce in early 2003. Ultimately, Complainant was granted registration on May 2, 2006, under the Registration Number 3,088,528.
Complainant has not licensed or otherwise permitted Respondent to use the NATURAL EDGE trademark or to register or use the domain name at issue. As of November 20, 2007, the website associated with <naturaledge.com> was a parking site with links to other websites advertising sale and acquisition of domain names.
Respondent registered the domain name at issue on February 13, 2004, prior to even the application of Complainant to register the NATURAL EDGE mark with the USPTO. Respondent denies any knowledge of Complainant’s use of the mark as of that date and there is no evidence to the contrary.
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.
Identical and/or Confusingly Similar
Complainant has not established common law rights in the NATURAL EDGE mark pursuant to Policy ¶ 4(a)(i) prior to its trademark application filed on May 8, 2004. It is not disputed that Respondent registered the domain name at issue on February 13, 2004. Complainant has provided no evidence of the fame or notoriety of its mark dating back to 2003 as claimed in its USPTO application for NATURAL EDGE. Therefore, Complainant’s common law trademark claims have no evidentiary basis. Thus Complainant has failed to establish common law rights in the NATURAL EDGE mark pursuant to Policy ¶ 4(a)(i). See Voip Review LLC v. Nokta Internet Techs., FA 1095192 (Nat. Arb. Forum Dec. 12, 2007) (“Complainant has not sufficiently established common law rights in the VOIP REVIEW mark and merely makes bald assertions as to its rights in the mark without offering any evidence to support those assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products). There is no evidence whatsoever that Complainant had common law or other rights in the NATURAL EDGE mark at the time of registration of the domain name at issue.
Accordingly, the Panel finds that the Complainant has failed to satisfy Policy ¶ 4(a)(i).
Since Complainant has failed to satisfy the first element of the Policy, it is not necessary for the Panel to decide the remaining two elements.
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)
Hon. Carolyn M. Johnson (Ret.)
Diane Cabell, Esq.
Dated: February 8, 2008
National Arbitration Forum