DECISION

Global Marketing Communications Ltd. v. Lee Bung Ran

Claim Number:  FA0407000304888

PARTIES

Complainant is Global Marketing Communications Ltd (“Complainant”), Tennyson House, 159-163 Great Portland Street, London, W1W 5PA, England.  Respondent is Lee Bung Ran (“Respondent”), YunsuGu DongchnDong Dongchn Apt yunsuGu, 406-722, Korea.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <global-marketing.com>, registered with Tucows Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 28, 2004; the Forum received a hard copy of the Complaint on August 6, 2004.

On July 28, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <global-marketing.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 August 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 7, 2004 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@global-marketing.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 13, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <global-marketing.com> domain name is confusingly similar to Complainant’s GLOBAL MARKETING trade name.

2. Respondent does not have any rights or legitimate interests in the <global-marketing.com> domain name.

3. Respondent registered and used the <global-marketing.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has been trading under the name Global Marketing Communications Ltd. since 2002.  Sometime during October 2001, Complainant paid Respondent $800 for the transfer of the <global-marketing.com> domain name registration.  However, Respondent never transferred the domain name registration to Complainant.  Since October 2001, Complainant has been using the <global-marketing.com> domain name for its website, believing that it owned the full rights to the domain name.

Respondent registered the <global-marketing.com> domain name on June 29, 2001.  According to Complainant, the domain name has been used by Complainant since October 2001.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 failed to show that it has established rights in the GLOBAL MARKETING mark.  Complainant does not hold a trademark registration.  Furthermore, Complainant has not asserted common law rights in the mark and has failed to show that it has established secondary meaning in the GLOBAL MARKETING mark.  Complainant merely asserts that it “has been trading under the name Global Marketing Communications since 2002.”  Use of a trade name is insufficient to satisfy Policy ¶ 4(a)(i).  Complainant has merely provided two magazine excerpts that mention Complainant’s trade name in order to establish Complainant’s rights.  Complainant has used the trade name for approximately two years, which without further evidence is insufficient to establish common law rights in a mark.  Moreover, nothing in the record indicates that there is strong customer identification of the GLOBAL MARKETING mark with Complainant’s goods or services.  Therefore, the Panel finds that Complainant has failed to establish rights in a mark as required by Policy ¶ 4(a)(i).  See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence, statements or proof, e.g., business sales figures, revenues, advertising expenditures, number of consumers served, trademark applications or intent-to-use applications); see also Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000)  (finding that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning Complainant must show that the public identifies the source of the product rather than the product itself); see also  Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services); see also Front Range Internet, Inc. v.  Murphy, FA 145231 (Nat. Arb. Forum Apr. 4, 2003) (finding that Complainant’s use of a trade name, without any showing of secondary meaning associated with the name, was an insufficient demonstration that Complainant “had rights” under the Policy).

Furthermore, even if Complainant had established rights in the GLOBAL MARKETING mark by 2002, Respondent’s registration of the domain name preceded Complainant’s rights in the mark.  Thus, Policy ¶ 4(a)(i) would not have been satisfied because Complainant did not have rights in the mark prior to Respondent’s registration of the domain name.  See Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that Complainant may have in its common law mark did not predate Respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied); see also Bus. Architecture Group, Inc. v Reflex Publ’g, FA 97051 (Nat. Arb. Forum June 5, 2001) (Complainant did not adequately demonstrate common law rights that predated the domain name registration).

Complainant asserts that it has purchased the domain name registration from Respondent but that Respondent has failed to transfer the registration.  This is a contractual issue, which is not within the scope of the Policy.  Therefore, the Panel does not express any opinion on this issue.  See Discover New England v. Avanti Group, Inc., FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding contractual dispute outside the scope of the UDRP).

Complainant has failed to satisfy Policy ¶ 4(a)(i) and therefore the Panel does not find it necessary to continue its analysis under Policy ¶¶ 4(a)(ii) or (iii). See Creative Curb v. Edgetec International Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant's failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

DECISION

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

James A. Crary, Panelist

Dated:  September 23, 2004

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