15th Nov 2007

 

National Arbitration Forum

DECISION

Streetfire, Inc. v. CKV c/o Domain Admin

Claim Number: FA0709001079950

PARTIES

Complainant is Streetfire, Inc. (“Complainant”), represented by David A.W. Wong, of Barnes & Thornburg LLP, 11 South Meridian Street, Indianapolis, IN 46204-3535. Respondent is CKV c/o Domain Admin (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <streetfire.com> and <streetfires.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 conflicts in serving as Panelists in this proceeding.

David A. Einhorn (Chairperson), David E. Sorkin and Hon. Ralph Yachnin as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 17, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 18, 2007.

On September 26, 2007, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <streetfire.com> and <streetfires.com> domain names are registered with Nameview, Inc. and that the Respondent is the current registrant of the names. 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 September 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 18, 2007 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@streetfire.com and postmaster@streetfires.com by e-mail.



A timely Response was received and determined to be complete on October 18, 2007.

A timely Additional Submission was received from Complainant and determined to be complete on October 24, 2007.

A timely Additional Submission was received from Respondent and determined to be complete on October 30, 2007.

On October 31, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David A. Einhorn, David E. Sorkin and Hon. Ralph Yachnin as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant makes the following assertions:

1.      Complainant owns common law rights to the STREETFIRE trademark. Complainant further contends that Respondent’s <streetfire.com> and <streetfires.com> domain names are confusingly similar to Complainant’s mark.

2.      Complainant contends that Respondent does not have any rights or legitimate interests with respect to the <streetfire.com> and <streetfires.com> domain names.

3.      Complainant contends that Respondent registered and used the <streetfire.com> and <streetfires.com> domain names in bad faith.

B. Respondent

Respondent contends that Complainant has not established that it had common law rights in the term “street fire” predating the time Respondent registered the disputed domains. Respondent further argues that it did not register the disputed domains with Complainant’s alleged trademark in mind, had no knowledge of Complainant, or of Complainant’s business, its web site or its trademarks, when it registered them, and that Complainant has proffered no evidence to the contrary.

C. Additional Submissions

The Panel has reviewed the parties’ Additional Submissions and has determined that they do not contribute further substance to these issues. Furthermore, in the view of a portion of the Panel, neither party has demonstrated the existence of any exceptional circumstances that would warrant consideration of additional submissions.

FINDINGS AND 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.

The Panel in this matter is of the opinion that the failure of Complainant to demonstrate that its trademark rights arose prior to the registration of Respondent’s domain names means that Complainant cannot prevail under ¶ 4(a)(i) and/or ¶ 4(a)(iii) of the Policy.

On the record before us, Complainant has demonstrated the existence of neither registered nor common law rights to the STREETFIRE mark predating Respondent’s registration of <streetfire.com> in August 2001. Nor has Complainant sufficiently demonstrated such rights as of Respondent’s registration of <streetfires.com> in July 2005. To establish that a common law trademark has been imposed, Complainant must show that the mark has achieved secondary meaning or association with Complainant. See Australian Trade Comm’n v. Reader, D2002-0786 (WIPO Nov. 12, 2002). The Complaint has not done so to the satisfaction of this Panel. Several Forum decisions have found that to satisfy the requirements of ¶ 4(a)(i), the complainant party must have had trademark or service mark rights before the domain name in dispute was registered. See, e.g., Anthony L. Trujillo & Planetfone, Inc. v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003), Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003), Bus. Architecture Group, Inc. v. Reflex Publ’g., FA 097051 (Nat. Arb. Forum June 5, 2001). Two Panelists would rule for Respondent on this basis alone.

Further, this Panel is unanimously of the view that, given the absence of any demonstrated trademark rights owned by Complainant at the time Respondent registered the domain names, Respondent could not have registered the domain names in bad faith as required by ¶ 4(a)(iii). See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001). Paragraph 4(b) of the Policy provides examples of the kind of conduct that constitutes bad faith registration. Those examples include preventing the Complainant from registering domain names containing its mark, registering the domain name to disrupt the Complainant’s business, or registering the domain name to divert Internet users from the Complainant’s web site to the Respondent’s web site. None of these examples could possibly be met if the Complainant had no trademark rights at the time the domain name was registered. See Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant). Furthermore, even if Complainant had acquired rights in its claimed mark by July 2005, Respondent’s interest in and registration of <streetfires.com> at that time was much more likely to have been motivated by the fact that it had already registered <streetfire.com> four years earlier rather than by any connection to Complainant or its mark. The 2005 registration of <streetfires.com> therefore was not in bad faith regardless of any trademark rights that Complainant may have acquired by that time.

Thus, the Panel has determined that the Complainant has not satisfied the requirements of Policy ¶ 4(a).

DECISION

As Complainant has failed to establish the requirements of Policy ¶ 4(a), Complainant’s requested relief is hereby DENIED.

 

David A. Einhorn, Presiding Panelist

Hon. Ralph Yachnin, Panelist

David E. Sorkin, Panelist

 

Dated: November 15, 2007