National Arbitration Forum

 

DECISION

 

Giva, Inc. v. R4L Privacy Advocate

Claim Number: FA0711001110724

 

PARTIES

Complainant is Giva, Inc. (“Complainant”), represented by Ron Avignone, 1556 Halford Avenue Suite #102, Santa Clara, CA 95051.  Respondent is R4L Privacy Advocate (“Respondent”), 8 Tenth Street, Newbury, MA 01951.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <giva.com>, registered with Tucows Inc.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

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 November 16, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <giva.com> domain name is registered with Tucows Inc. and that the Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 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 postmaster@giva.com by e-mail.

 

A timely Response was received and determined to be complete on December 20, 2007.

 

On December 29, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

Thereafter, the Panel requested the parties to submit information to address whether Complainant had established common law rights in the GIVA mark. 

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     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 August 7, 2007).  Complainant states that it is a leading provider of service management solutions by helping companies manage, analyze, and streamline their service management business processes to reduce costs, speed issue resolution, and increase customer satisfaction.

 

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.

 

B.     Respondent

 

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.” 

 

FINDINGS

Complainant first used the mark GIVA in commerce on October 27, 1999.  It filed is application to register GIVA with the USPTO on September 6, 2006; its mark was registered on August 7, 2007.  For the purposes of this Decision, the relevant registration date for the <giva.com> domain name is January 5, 2003. 

 

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 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.

 

Identical and/or Confusingly Similar

 

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 years); Phoenix Mort. Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (Policy 4(a)(i) necessarily implies that the complainant's rights predate the registration of the domain name); contra Digital Vision, Ltd v. Advanced Chemill Sys., D2001-0827 (WIPO Sept. 23, 2001). 

 

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 Oct. 20, 2000).  This requirement is “substantial.”  County Bookshops v. Loveday, D2000-0655 (WIPO Sept. 22, 2000). 

 

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).

 

DECISION

 

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.

 

 

 

Bruce E. Meyerson, Panelist
Dated: February 4, 2008

 

 

 

 

 

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