December 31st, 2013
And Another One Bites the Dust

The year 2013 ends with good news for my client who had to defend a UDRP on TriPacific.com. The National Arbitration Forum Denied the claim of TriPacific Capital Advisors, LLC, as the Claimant didn’t begin to use the common law mark until 4 years after the domain was registered.

Here is the decision:

NATIONAL ARBITRATION FORUM

DECISION

TriPacific Capital Advisors, LLC v. ahura fze / domain admin
Claim Number: FA1311001530299

PARTIES
Complainant is TriPacific Capital Advisors, LLC (“Complainant”), represented by Daniel M. Livingston of Payne & Fears LLP, California, USA. Respondent is ahura fze / domain admin (“Respondent”), represented by Howard Neu of Law Office of Howard Neu, P.A., Florida, USA.

FINDINGS
Because Respondent registered the domain name over four years before the Complainant began using its mark in commerce the Complainant did not establish bad faith registration of the domain name.

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.”

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.

Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii), the Panel declines to analyze the other two elements of the Policy. E.g., Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

Registration and Use in Bad Faith
The record indicates that Respondent registered the domain name over four years before Complainant’s acknowledged first use of the TRIPACIFIC mark. The WHOIS information for Respondent’s domain name indicates that the domain name was registered on July 18, 2001. Complainant’s first use in commerce of the TRIPACIFIC mark was not until December 5, 2005. It is well established that a respondent does not act in bad faith where it registers a domain name prior to a complainant’s use of a mark. E.g., Aiden fung v. terry zimmer, FA 1396869 (Nat. Arb. Forum Aug. 18, 2011) (no bad faith found where the complainant failed to provided evidence of common law rights before the domain name was registered); Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (no bad faith found where the domain name was registered three years before the complainant began using the mark).

DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.

Hon. Neil Brown QC, G. Gervaise Davis III
and Hon. Bruce E. Meyerson (Ret.), Panelists
Dated: December 26, 2013