Giva, Inc. v. R4L Privacy Advocate
Claim Number: FA0711001110724
Complainant is Giva, Inc. (“Complainant”), represented by Ron
Avignone, 1556 Halford Avenue Suite #102, Santa Clara, CA 95051. Respondent is R4L Privacy Advocate (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <giva.com>, registered with Tucows Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 16, 2007.
On December 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 2007 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on
Thereafter, the Panel requested the parties to submit information to address whether Complainant had established common law rights in the GIVA mark.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant holds a trademark registration for the GIVA mark
with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 3,275,239 issued
Complainant states that Respondent is not using the domain name to provide a bona fide offering of goods or services and the site is only being used for pay-for-click advertising. Furthermore, Complainant states the Respondent is not commonly known as <giva.com>. Complainant alleges that Respondent acquired the domain name primarily for the purpose of selling it to the highest bidder.
Finally, Complainant claims that the site displays links to various commercial websites that offer goods and services identical, directly competitive, or related to the services provided by Complainant.
Respondent states when Complainant chose its name it did so “knowing fully well that Giva.com was already registered.” According to Respondent, “GIVA” does not describe Complainant’s business.
Respondent states that during the eight years since the domain name was registered, Complainant has done nothing to make a “‘good faith’ effort to acquire the domain.” Respondent denies that the domain name had been transferred previously. According to Respondent, the domain name “goes to a PPC site selling products and services not remotely related to Complainant’s business.”
Complainant first used the mark GIVA in
commerce on October 27, 1999. It filed
is application to register GIVA with the USPTO on
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
It has been consistently held that a complaining party may not
satisfy the requirements of Policy 4(a)(i) if the complainant’s
registration and rights do not predate the respondent’s registration of a
similar domain name. Weil Lifestyle, LLC v. Vertical Axis, Inc.,
FA 926455 (Nat. Arb. Forum May 9, 2007) (Policy 4(a)(i)
not satisfied where the respondent registered its domain name one month before the
complainant’s first use in commerce of its mark); Transpark
LLC v. Network Adm'r, FA 135602 (Nat. Arb. Forum Jan. 21, 2003) (the
complainant failed to satisfy Policy 4(a)(i) because the respondent's domain
name registration predated the complainant's rights in its mark by nearly two
Mort. Corp. v. Toggas, D2001-0101 (WIPO
Although the WHOIS information for the disputed domain name indicates that it was first registered on April 7, 1999, Complainant asserts that it was transferred in 2003 to one Michael Brooks, and that Mr. Brooks is the current owner of the <giva.com> domain name. Even if the Panel were to adopt Complainant’s assertion on this issue, see The Christensen Firm v. Chameleon Data Corp., 2006 WL 3158246 (W.D. Wash. 2006), the Panel would find only that the relevant registration date for the <giva.com> domain name is January 5, 2003.
Thus, for Complainant to
prevail on this issue it must establish that it held common law rights in the
mark GIVA prior to the date the domain name was registered. To establish secondary meaning, or common law
rights, a complaining party must show that its mark has acquired sufficient
distinctiveness through use. Chromomalloy Men’s Apparel Group v. Burch
& Hatfield Formal Shops, D2000-1046 (WIPO
Although Complainant began using the word “GIVA” in commerce in 1999, the record (including the supplemental information provided by Complainant) fails to establish that its mark acquired secondary meaning prior to the date the domain name was registered. Thus, for the purposes of the Policy, Complainant did not acquire “rights” in “GIVA” until at the very earliest, 2006, three years after the registration of the domain name. Accordingly, Complainant has not satisfied the requirements of Policy 4(a)(i).
Having failed to establish that the domain name is confusing similar or identical to a trademark in which Complainant has rights, the Panel concludes that relief shall be DENIED.
Dated: February 4, 2008
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