DuWop, LLC v. Jayson Online

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 Registrar’s 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.

Respondent’s 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 ‘on behalf of’ 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 registrar’s 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.’s 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. Parties’ 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 Complainant’s 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 Respondent’s 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 don’t 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 Respondent’s query regarding the

legal status of Complainant’s 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) Respondent’s 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) Respondent’s 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].

Complainant’s 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, Complainant’s application for registration with the USPTO

was filed as an "intent to use" (ITU) application

[5]. If the USPTO grants registration of Complainant’s 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 Complainant’s ITU application was August

20, 1999. As of October 24, 2001, the status of Complainant’s 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

Complainant’s 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 Respondent’s domain name registration, Respondent did not intend

to interfere with or take advantage of Complainant’s 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 Complainant’s 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

Complainant’s 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 Complainant’s 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 § 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 § 19:13 (4th ed. 1996

and updated).

6. Id.