Crystalfontz America Inc. v. Tharn Lago
Claim Number: FA0207000115081
Complainant is Crystalfontz America Inc., Valleyford, WA, USA (“Complainant”). Respondent is Tharn Lago, Vancouver, BC, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crystalfonts.com>, registered with Planet Domain.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 11, 2002; the Forum received a hard copy of the Complaint on July 25, 2002.
On July 28, 2002, Planet Domain confirmed by e-mail to the Forum that the domain name <crystalfonts.com> is registered with Planet Domain and that Respondent is the current registrant of the name. Planet Domain has verified that Respondent is bound by the Planet Domain 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 July 29, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 19, 2002, 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On September 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Respondent’s <crystalfonts.com> domain name is confusingly similar to Complainant’s CRYSTALFONTZ mark.
2. Respondent does not have any rights or legitimate interests in the <crystalfonts.com> domain name.
3. Respondent registered and uses the <crystalfonts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant asserts that it conducts operations under the Crystalfontz business name, and that it has rights in the CRYSTALFONTZ mark denoting “liquid crystal displays.”
Respondent registered the disputed domain name on March 10, 2002. Complainant’s investigation of Respondent’s use of the domain name indicates that Respondent is a competitor of Complainant, offering identical goods in the same industry.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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.
Complainant fails in establishing rights in the CRYSTALFONTZ mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts its rights to the CRYSTALFONTZ mark based on use of the mark as a business identity. Complainant also allegedly has trademark rights in the CRYSTALFONTZ mark. However, a rudimentary search on the U.S. Patent and Trademark Office’s (“USPTO”) website reveals that Complainant only has an application for the CRYSTALFONTZ mark, filed for on April 19, 2002, over a month after Respondent registered the disputed domain name. The USPTO’s record of Complainant’s mark signifies that the first use of CRYSTALFONTZ in commerce by Complainant was May 1, 1998; thus, predating Respondent’s use of the mark in the subject domain name. Although this Panel is not of the opinion that trademark registration must predate domain name registration, the circumstances are relevant when considering Complainant’s rights in the CRYSTALFONTZ mark.
Complainant also fails to demonstrate with sufficient evidence its rights in the CRYSTALFONTZ mark. Although an application for trademark registration is adequate proof of rights in a mark, Complainant fails to assert this argument. Complainant must fulfill its initial burden to prove, by a preponderance of the credible, relevant and admissible evidence, that the domain name is confusingly similar to a mark in which it has rights. See FRH Freies Rechenzerntrum v. Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that Complainant has not proven by a preponderance of the relevant, admissible and credible evidence that the domain name in question is identical to a trademark in which Complainant has rights despite Complainant’s mark being the dominant feature of Complainant’s trade name).
In initiating a proceeding under the UDRP, Complainant bears the initial burden of presenting a sufficient prima facie case showing rights in a mark. In the present case, Complainant asserts rights in the CRYSTALFONTZ mark, yet fails to adequately support that assertion with any evidence, statements or proof (e.g., business letterhead, sales figures, advertising expenditures). See Do the Hustle v. Tropic Web, D2000-0624 (WIPO August 21, 2000) (finding that paragraph 4(a) of the Policy sets out three elements implying that Complainant has the burden of proof as to each of the three elements).
Furthermore, brand significance and secondary source identity is paramount to establishing rights in a trade name. Complainant’s Submission includes no evidence to support a finding that the consuming public has developed a sense of brand identity with its CRYSTALFONTZ product, brand or services. See Hbn-Teknik A/S v. Park Sung Jo, FA 110844 (Nat. Arb. Forum August 11, 2002) (stating, “[T]he general rule is that each unregistered common law trademark and each service mark require a style of use whereby the public develops a sense of the brand significance of the subject term. That brand significance is. . .called a ‘secondary meaning’ of the term which the public begins to become aware of after substantial public use of the subject term in clear association with a given product or service”). Simply operating under a business name does not, per se, constitute secondary source identification. Complainant’s burden requires supporting evidence or information indicating that consumers identify its business name as a source identifier.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has not been satisfied. Because satisfaction of each element listed under paragraph 4(a) is mandatory, it is not necessary to pursue analysis of Policy ¶¶ 4(a)(ii) or (iii).
Having failed to establish the elements required under ICANN Policy, the Panel concludes that relief should be hereby DENIED.
Accordingly, it is Ordered that the <crystalfonts.com> domain name REMAIN with Respondent.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 24, 2002.
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