Complainant is Doheny Plumbing, Inc., of San Clemente, California, United States of America, represented by Rutan & Tucker, LLP, of Costa Mesa, California, United States of America.
Respondent is PAO Industries, Inc., of Rancho Santa Margarita, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dohenyplumbing.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, Inc. (“GoDaddy”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2007. On December 13, 2007, the Center transmitted by e-mail to GoDaddy a request for registrar verification in connection with the domain name at issue. On December 13, 2007, GoDaddy transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 11, 2008.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on January 22, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the owner of U.S. Reg. No. 3,304,941 for the mark DOHENY PLUMBING for use in connection with “plumbing contractor services; [and] plumbing services”. This registration is on the Supplemental Register and was issued on October 2, 2007, claiming a first use in commerce date of September 15, 2003.
The Disputed Domain Name was created on November 20, 2006.
5. Parties’ Contentions
A. Complainant
Complainant contends, inter alia, as follows:
- The Disputed Domain Name is identical or confusingly similar to U.S. Reg. No. 3,304,941 because the “appearance, sound and meaning” of the trademark registration and the Disputed Domain Name are identical.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because inter alia, Respondent “owns no trademark registrations or applications including the term ‘DOHENY,’ or any close variation thereof”; Respondent is using the Disputed Domain Name in connection with a website that “provides a page of links to other web pages which contain topic specific links that direct users to actual website… [that] pertain to the same types of goods and/or services that are offered by Complainant”; Complainant has not authorized Respondent to use “its trademark”; Respondent has not used or made preparations to use the Disputed Domain Name in connection with a bona fide offering or goods or services; Respondent has never been commonly known by the Disputed Domain Name; and Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or tarnishing “the trademark or service mark at issue.”
- The Disputed Domain Name was registered and is being used in bad faith because Respondent’s website “tread[s] on [Complainant’s] goodwill”; Respondent is offering the Disputed Domain Name for sale at the “GoDaddy.com Domain Name Aftermarket” online auction for $50,000; Respondent uses the Disputed Domain Name “to divert customers and potential customers of Complainant to Respondent’s website”; and “Respondent is holding the [Disputed Domain Name] to prevent Complainant, the true owner of the trademark, from owning the [Disputed Domain Name].”
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy. Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc.,
WIPO Case No. D2005-1246 (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element,… it is not necessary to make a finding under the second element of the Policy”); Micro Electronics, Inc. v. MicroCenter,
WIPO Case No. D2005-1289 (where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”). Therefore, given that the Panel in the instant case finds, as discussed below, that Complainant has failed to prove the first element of the Policy – that is, paragraph 4(a)(i) – the Panel makes no findings with respect to the second or third elements of the Policy.
A. Identical or Confusingly Similar
The first element of the Policy requires Complainant to identify “a trademark or service mark in which the Complainant has rights.” In support thereof, Complainant identifies only U.S. Reg. No. 3,304,941, for the mark DOHENY PLUMBING. However, this registration disclaims the word “plumbing” and, furthermore, is on the Supplemental Register, apparently because the remaining component of the mark, DOHENY, is “primarily merely a surname” and therefore not entitled to registration on the Principal Register, according to an uncontradicted Office Action issued by the U.S. Patent and Trademark Office on July 23, 2007.1 The Supplemental Register is available for certain marks that are not eligible for registration on the Principal Register. Marks on the Supplemental Register are not entitled to all of the protections as those on the Principal Register. See 15 U.S.C. § 1094 et seq.
Where a mark is registered on the Supplemental Register, previous decisions under the Policy have found that a “Complainant must show that the mark is used as a trademark or service mark and in such use, the mark has acquired distinctiveness for the Complainant’s goods or services” because “Registration on the Supplemental Register is an indication that the mark has not acquired distinctiveness, at least at the time of the registration.” Kip Cashmore v. URLPro,
WIPO Case No. D2004-1023 (internal punctuation and citation omitted); see also The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658],
WIPO Case No. D2007-1438. As in Kip Cashmore, “[t]he record is devoid of any declarations of unaffiliated parties attesting that the mark of Complainant serves as an identifier of origin of services.” In this proceeding, the Complainant has provided no evidence to establish that the mark at issue has acquired distinctiveness.
B. Rights or Legitimate Interests
Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the second element of the Policy, paragraph 4(a)(ii), the Panel refrains from doing so.
C. Registered and Used in Bad Faith
Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the third element of the Policy, paragraph 4(a)(iii), the Panel refrains from doing so.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Douglas M. Isenberg Sole Panelist
Dated: January 26, 2008
1 Although this Office Action was not provided by the Complainant, the Panel may “undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” para. 4.5, <http://www.wipo.int/amc/en/domains/search/overview/index.html> (visited January 24, 2008).
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