Complainant fails to make case in 'graman.com' dispute
In Graman USA Inc v Shenzhen Graman Industrial Co, National Arbitration Forum panellist James P Buchele has rejected a complaint filed by Graman USA against Shenzen Graman over the domain name 'graman.com', stating that Graman USA had not provided a prima facie case. Specifically, Buchele said that the complaint was "detrimentally brief and unspecific, and consequently appears to violate the [Uniform Domain Name Dispute Resolution Policy (UDRP) Rules]". Rule 3(ix) requires the complainant to:
"Describe, in accordance with the [UDRP], the grounds on which the complaint is made including, in particular:
(1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) why the respondent (domain name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and
(3) why the domain name(s) should be considered as having been registered and being used in bad faith."
Relying on its US registration of the mark GRAMAN, Graman USA challenged the registration of 'graman.com'. Although Shenzhen Graman only sent a brief email and otherwise failed to respond formally to the complaint in compliance with the UDRP Rules, this did not suffice for Graman USA to prevail.
Buchele determined that Graman USA failed to demonstrate that Shenzhen Graman does not use the domain name for a legitimate offering of goods or services. Rather, he found that Shenzhen Graman has rights in the domain name, since it consists of an element of the company's name in China. Reinforcing this legitimate use, Buchele found that the parties do not offer competitive goods. Under these circumstances, Buchele concluded he could not order that the domain name be transferred.
This decision reinforces the need for complainants in UDRP proceedings to allege more than conclusory statements in support of their claims, otherwise they risk losing even when registrants do not bother to file a legitimate denial of the complaint allegations.
Rochelle D Alpert, Morgan Lewis & Bockius LLP, San Francisco
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