Vanvleckhomes.com

The timeline behind vanvleckhomes.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Van Vleck Homes, Inc. v. Steven Kirk Claim Number: FA0502000414680 PARTIES Complainant is Van Vleck Homes, Inc. (“Complainant”), Post Office Box 376, West Sand Lake, NY 12196. Respondent is F. Steven Kirk (“Respondent”), 378 Nortonville Road, Valley Falls, NY 12185. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <vanvleckhomes.com>, registered with Register.com. 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. Jacques A. Léger, Q.C. as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 7, 2005. On February 3, 2005, Register.com confirmed by e-mail to the National Arbitration Forum that the domain name <vanvleckhomes.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 February 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 7, 2005 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@vanvleckhomes.com by e-mail. A timely Response was received and determined to be complete on March 7, 2005. On March 10th, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jacques A. Léger, Q.C. as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred to it from Respondent. PARTIES’ CONTENTIONS A. Complainant Complainant contends that the disputed domain name is identical to a service mark in which Complainant has rights, namely VAN VLECK HOMES. Complainant asserts that it is a New York corporation that has been conducting business as a new home builder under the name since 1996 and that it has built over 60 homes in Rensselaer County, New York. Complainant argues that Respondent has no rights or legitimate interests in respect to the disputed domain name since Respondent has no name corresponding to the domain name in connection with a bona fide offering of goods and services, and that it is not commonly known by the domain name. Complainant adds that Respondent is using the domain name to send anyone interested in Van Vleck Homes to a web site with false claims and misleading information about the home Respondent purchased from Complainant. Complainant also contends that the website is intended to disparage the name and reputation of Complainant, and that Respondent’s intent in operating it is to tarnish the service mark of Complainant. Complainant also argues that Respondent registered and is using the disputed domain name in bad faith. Complainant alleges that Respondent registered the disputed domain name during the construction of his new home to show pictures of the construction with sarcastic commentary and to otherwise exact revenge on Complainant for not being able to dictate the builder’s operations during the construction of Respondent’s home. B. Respondent In its Response, Respondent states he does not dispute Complainant’s claims relative to paragraph 5 a. of the Complaint, other than to say he has no way of verifying if Complainant actually constructed the 60 buildings they claim in the Complaint. Respondent also contends he has “an interest in Van Vleck Homes” because he purchased a building from Complainant totaling almost $300,000. Moreover, Respondent affirms that it secured, and is using the disputed domain name to show images of the building he purchased from Complainant to family and friends that live in the area and cannot visit the building in question. He adds that there was no intent to show it to anyone other than family and friends, and that the website in question contains no false or misleading information. As such, he affirms that the website is not intended to disparage the name and reputation of Complainant and is offered only to provide a view of the building Respondent purchased from Complainant. In addition, Respondent claims that there was never any intent or effort on his part to direct customers to the www.vanvleckhomes.com website. To this effect, Respondent asserts that he did not register the website with any search engine and only informed family and friends about the website, individuals that allegedly “would have no interest in purchasing a building from “Van Vleck Homes”. Respondent also disputes Complainant’s claim that he registered the disputed domain name “for revenge” for the reasons mentioned above. FINDINGS The Panel finds that Complainant has not adequately demonstrated it has rights in the mark VAN VLECK HOMES. For this reason, the Complaint is dismissed, without prejudice for Complainant to re-file. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” 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; (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. (1) Complainant’s rights in the mark “VAN VLECK HOMES” Complainant registered the service mark VAN VLECK HOMES, Registration No. S-19036 with the Department of State of New York on December 13, 2004. However, this registration was made about six months after Respondent’s registration of the disputed domain name. It is clear that a Complainant should not gain rights to a mark retroactively from the date of the first registration of said mark. See The Mills Limited Partnership v. Michael G. Miller (WIPO Case No. D2000-1577, March 8th 2001) (wherein the Panel found that a Complainant cannot as a matter of strict legal construction properly claim it is entitled to a date prior to the registration of the mark as a constructive use date.) Paragraph 4(a)(i) of the Policy provides that an applicable dispute is one where a domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights (emphasis added)”. It is trite law that a Complainant needs not necessarily have a registered trademark or service mark in order to seek the remedies contemplated in the Policy, as they are also open to those who have common law rights to such marks. Therefore, a Complainant clearly has the burden of demonstrating that it holds such rights to a trademark or service mark, whether it be a registered mark or a common law one. In the case of a registered mark, such burden is alleviated as the owner benefits of legal presumptions. In the case of a common law mark, it is incumbent upon Complainant to actually show that it has acquired such rights through use. In this case Complainant being only able to rely on common law rights, it is incumbent upon it to actually show acquisition of such rights through use. However, no serious attempt was made by Complainant to demonstrate it has acquired such common law rights that would have accrued to it through use. For example, in its Complaint, it merely mentions “the Complainant is a New York corporation and has been conducting business as a new home builder under the name since 1996 building over 60 homes in Rensselaer County, New York”, but no supporting evidence was filed. A mere allegation in a Complaint is not sufficient for a Complainant to establish it has common law rights in a trademark or service mark. For this to be done, a Complainant must file concrete evidence demonstrating that it has invested considerable time, effort and resources to establish an association between its mark and its goods or services. See InterTrade Systems Corporation v. Donna Lawhorn (Nat. Arb. Forum, July 15, 2002), Jeanette Winterson v. Mark Hogarth, (WIPO Case No. D2000-0235), and Cedar Trade Associates Inc .v. Greg Ricks [File No. FA 0002 000093633] of February 25, 2000, where the Panel found that the Complainant (Cedar) had invested considerable time and effort in establishing an association between "BuyPC.com" and its goods and services over approximately 4 years, and thus that "BuyPC.com" qualified as a trademark for the purposes of the Policy. It is clear from the Complaint that Complainant has not satisfied its burden in this respect. Given the circumstances of this case, the Panel adopts the finding of the Backstreet Boys Productions case, namely that this dismissal is without prejudice to a re-submission of the matter to a subsequent Panel, should Complainant so elect. See Backstreet Boys Productions inc. v. John Zuccarini, Cupcakeparty, Cupcake Real Video, CupcakeShow and Cupcakes-First Patrol (WIPO D-2000-1619, 27 March 2001, wherein the Panel found that the dismissal was “without prejudice to the matter being re-filed should Complainant be able to present evidence of a right to the trademark on which it relies”); GA Modefine S.A. v. Sparco P/L (WIPO D2001-0370, 6 May 2001, wherein the Panel found that “(…) the Complainant should have the chance to file another Complaint where these elements (of paragraph 4(a)(ii) and (iii) are properly alleged and discussed). Complainant having failed to establish the first element of Paragraph 4(a) of the Policy, there is no need for the Panel to consider the other two elements. DECISION Having failed to establish the first element required under Paragraph 4(a) of the ICANN Policy, the Panel concludes that relief shall be DENIED, without prejudice for Complainant to re-file, should it elect to do so. Jacques A. Léger, Q.C., Panelist Dated: April 1, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.