national arbitration forum

DECISION

Flower Power LLC v. Horoshiy, Inc. a/k/a Horoshiy

Claim Number:  FA0409000335360

PARTIES

Complainant is Flower Power LLC (“Complainant”), represented by Oscar L. Alcantara, of Goldberg, Kohn, Bell, Black, Rosenbloom & Moritz, Ltd., 55 East Monroe Street, Suite 3700, Chicago, IL 60603-3700.  Respondent is Horoshiy, Inc. a/k/a Horoshiy (“Respondent”), F.D. Rooseveltweg, #518, Curaco, AN.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tapscotts.com>, registered with Nameking.com, Inc.

PANEL

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

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2004; the National Arbitration Forum received a hard copy of the Complaint on September 27, 2004.

On October 11, 2004, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <tapscotts.com> is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.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 October 14, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 3, 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@tapscotts.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On November 17, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <tapscotts.com> domain name is confusingly similar to Complainant’s TAPSCOTT’S mark.

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

3. Respondent registered and used the <tapscotts.com> domain name in bad faith.

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

FINDINGS

Complainant manufactures, distributes and sells artificial floral products under the TAPSCOTT’S mark.  Complainant and its predecessor have continuously used the mark in commerce since as early as 1939 in connection with the sale and promotion of artificial floral products.

Respondent registered the domain name on January 13, 2004.  The domain name is used to promote the products and services of Complainant’s competitors.

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 asserts that it has established common law rights in the TAPSCOTT’S mark through its continuous use of the mark in commerce since 1939.  Moreover, Complainant avers that it has expended considerable time, money and resources developing, promoting and advertising its TAPSCOTT’S brand through various media in interstate commerce.  Furthermore, Complainant contends that the mark has earned significant goodwill.  

However, Complainant failed to provide adequate evidence of common law rights in the TAPSCOTT’S mark.  The only evidence that Complainant provided was an order form and excerpt from a 2004 catalogue.  Complainant has failed to prove that secondary meaning is established with the TAPSCOTT’S mark and therefore has failed to establish rights in a mark pursuant to Policy ¶ 4(a)(i).  See Weatherford Int’ll, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (stating that “[a]lthough Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [a]lthough Complainant’s WELLSERV product and related services may be well-known among relevant consumers, that is a finding that must be supported by evidence and not self-serving assertions”); 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).

Because Complainant must prove all three elements under paragraph 4(a) of the Policy to prevail in this proceeding, Complainant's failure to prove Policy paragraph 4(a)(i) means that the Panel need not consider whether Complainant has proven the remaining elements contained in Policy paragraphs 4(a)(ii) and (iii).  See Creative Curb v. Edgetec Int’l 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); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent’s default does not automatically lead to a ruling for Complainant).

The Panel finds that Policy ¶ 4(a)(i) has not been satisfied.

DECISION

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  November 29, 2004

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