national arbitration forum

DECISION

Retail Industry Leaders Association, Inc. v. R.I.L.A. (Rhode Island Local A) c/o Null Null

Claim Number:  FA0410000347841

PARTIES

Complainant is Retail Industry Leaders Association, Inc. (“Complainant”), represented by Morrison Cain, 8513 Howell Road, Bethesda, MD 20817. Respondent is R.I.L.A. (Rhode Island Local A) c/o Null Null (“Respondent”), 1500 Hospital Trust Tower, Suite 821, Providence, RI 02903.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rila.org>, registered with Bulk Register.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically October 20, 2004; the National Arbitration Forum received a hard copy of the Complaint October 25, 2004.

On October 21, 2004, Bulk Register confirmed by e-mail to the National Arbitration Forum that the domain name <rila.org> is registered with Bulk Register and that Respondent is the current registrant of the name. Bulk Register verified that Respondent is bound by the Bulk Register registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On November 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 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@rila.org 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 December 6, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <rila.org>, is identical to Complainant’s RILA mark.

2. Respondent has no rights to or legitimate interests in the <rila.org> domain name.

3. Respondent registered and used the <rila.org> domain name in bad faith.

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

FINDINGS

Complainant, a New York State nonprofit corporation, filed an intent-to-use service mark application for “RILA” with the United States Patent and Trademark Office (the “USPTO”). The application states the association’s intent to use the mark in connection with, among other things, providing online newsletters in the fields of retail and retail supply. Complainant adopted its current name, Retail Industry Leaders Association, Inc., on January 25, 2004. Complainant is the successor to earlier organizations that existed for over forty years under different names.

Respondent registered the <rila.org> domain name April 17, 2000. Respondent’s website has posted no content since the disputed domain name’s registration some four and a half years ago.

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar

Complainant alleges rights in the RILA mark as the result of Complainant’s service mark registration application with the USPTO. It is true that some panels have found or alluded to the potentiality for rights to exist in a mark as the result of trademark or service mark applications with legitimate governmental authorities. See, e.g., Serverworks Corp. v. Directname, FA 146929 (Nat. Arb. Forum Apr. 14, 2003) (“Complainant has established rights in the SERVERWORKS mark through proof of application for a trademark with the USPTO, as well as through use of the mark in commerce.”); ROI Solutions, Inc. v. Jaewan, FA 95914 (Nat. Arb. Forum Jan. 17, 2001) (“[A] pending federal trademark application, combined with prior use of the mark is sufficient evidence on which to find that Complainant 'has rights' in a trademark or service mark.”); Aston v. Pierrets, FA 117322 (Nat. Arb. Forum Sept. 27, 2002) (stating in dicta that “[e]vidence that Complainant is actively seeking trademark protection for a mark in question is enough to show rights in the mark sufficient to establish standing.”).

However, the majority of cases decided under the Policy have found that pending trademark or service mark applications alone are not sufficient to establish standing under the Policy. One panel has stated that “the broad consensus under the Policy is that a trademark application alone is not sufficient” to establish rights in a mark. See PRGRS, Inc. v. Pak, D2002-0077 (WIPO Apr. 24, 2002); see also Amsec Ent. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (finding that Complainant's pending trademark applications do not establish any enforceable rights to the mark until a trademark registration is issued); see also Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (“Complainant's pending trademark application does not in and of itself demonstrate trademark rights in the mark applied for.”); see also Tribute, Inc. v. dotPartners, LLC, FA 109702 (Nat. Arb. Forum Aug. 20, 2002) (“It is not sufficient [to establish standing] to assert a pending trademark application or mere use.”); see also Bar Code Disc. Warehouse, Inc. v. Barcodes, Inc., D2001-0405 (WIPO July 27, 2001) (“[A]n application for registration standing alone establishes neither rights nor presumptions.”).

Of particular importance in the instant case is the fact that Respondent registered the domain name <rila.org> April 17, 2000. The record does not show when Complainant filed for its RILA service mark with the USPTO, but Complainant did not even begin using the RILA service mark until January 25, 2004. The “vast majority of decisions” under the Policy require a complainant’s rights in a mark to predate the registration of a disputed domain name. See Abt Elecs., Inc. v. Motherboards.com, FA 221239 (Nat. Arb. Forum Feb. 20, 2004). Even if the Panel were to assume arguendo that Complainant’s pending service mark application is sufficient to establish rights in the RILA mark, Complainant’s reliance on rights that postdate Respondent’s domain name registration bars any claim by Complainant under the Policy. Therefore, for Complainant to establish standing under the Policy, Complainant must prove common law rights that arose prior to April 17, 2000 in the RILA mark. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”).

Complainant neither asserted common law rights in the RILA service mark nor supplied evidence that it has acquired common law rights in the mark. Therefore, the Panel finds that Complainant failed to establish common law rights in the RILA mark; therefore, Complainant lacks standing under the Policy. See 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 failed to establish standing pursuant to paragraph 4(a)(i) of the Policy, it is unnecessary to address paragraphs 4(a)(ii) and (iii) of the Policy. 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 elements unnecessary).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the petition for relief shall be DISMISSED without prejudice to refiling.

Hon. Carolyn Marks Johnson, Panelist

Dated: December 20, 2004

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