RecruitUSA Inc. v. Brian Krueger
Claim Number: FA0806001203764
Complainant is RecruitUSA Inc. (“Complainant”), represented by Marc
Jonas Block, of Salon Marrow Dyckman Newman & Broudy
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arbita.com>, registered with Godaddy.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
David P. Miranda as panelist
Hon. Bruce Meyerson as panelist
Roberto A. Bianchi as chair
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 11, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 16, 2008.
On June 11, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <arbita.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 June 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 10, 2008 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 July 7, 2008.
Complainant timely submitted an Additional Submission. However, payment for this submission was received late. Thus, the Panel may decline to admit Complainant’s Additional Submission. Since the Complaint fails to discharge the onus on Complainant to prove that it has rights in a mark (see below), it would be pointless to consider further submissions from the Parties. In the present circumstances, the Panel declines to admit any submissions from the Parties other than the Complaint and the Response.
On July 22, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Bruce Meyerson and David P. Miranda as panelists, and Roberto A. Bianchi as chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In essence, Complainant contends the following:
- Complainant contends that it owns the “active trademark” ARBITA, which was first used in commerce on September 24, 2001 regarding recruiting, staffing and advertising services, etc. On December 28, 2007, Complainant filed before the USPTO two trademark applications for the word mark ARBITA and one application for the word mark ARBITA THE WAY FORWARD.
- Complainant alleges that it was the former owner of the domain name at issue, and that this registration lapsed due to a clerical error. Respondent subsequently registered the domain name. Respondent caused the traffic intended for <arbita.com> to be re-directed first to the websites <recruitusa.com> and later to the website <arbita.net>, both owned by Complainant. Thus, Complainant and visitors were unaware that the domain name at issue had been registered by Respondent until 2007, where Respondent decided to “park” its website with Godaddy.com “parking” service.
- Respondent, says Complainant, is a competitor of Complainant.
- Complainant contends that the domain name in dispute is identical to and likely to cause confusion with Complainant’s ARBITA mark. Respondent has no rights or legitimate interests in respect of the domain name. Respondent admitted that he has made no actual use of the domain name, which is evidence of bad faith in registering the domain name. Also, it is evidence of bad faith that Respondent offered to sell the domain name <arbita.com> for valuable consideration to Complainant. Respondent is a competitor of Complainant, and his registration of the domain name disrupts Complainant’s business.
In essence, Respondent contends the following:
- Respondent denies that Complainant has rights in the ARBITA mark, since the trademark applications were made more than a year and a half after Respondent purchased the disputed domain name.
- Respondent denies that he is a competitor of Complainant. Respondent contends he is an employee of Amazon.com, working in a non-competitive field and doing non-competitive work. Respondent did not offer to sell the domain name until contacted by Complainant and only after and because of the threat of litigation.
- Respondent lawfully purchased the domain name with the plan of developing a site in the future around the topic of arbitration.
Complainant failed to prove that it has rights in the trademark on which the Complaint is based. It is unnecessary for the Panel to examine the second and third element of the Policy for concluding, as it does, that the Complaint must fail.
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.
Under the first element of the ICANN Policy a complainant is required to prove, first, that it has rights in a trademark or service mark, and second, that the domain name in dispute is identical or confusingly similar to such mark.
The ICANN Policy does not distinguish between registered and unregistered marks. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (acknowledging that Policy ¶ 4(a)(i) refers merely to a “trademark or service mark,” without expressly limiting itself to a registered trademark or service mark, and further recognizing that the WIPO Final Report of April 1999, from which the Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names, and further concluding that the Policy is applicable to unregistered trademarks and service marks); see also Hankison Int’l v. Hankisoninternational.com, FA 94393 (Nat. Arb. Forum May 3, 2000) (considering that trademark rights are acquired and maintained by actual use of the mark in commerce and that unregistered marks also are protected under common law principles, and finding that the domain name in issue was nearly identical to Complainant’s name and long-used unregistered mark). However, in order to determine whether the ARBITA unregistered mark complies with Policy ¶ 4(a)(i), the Complainant must establish that it has common law rights to the mark. Such standards include length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. See Amsec Enters., L.C. v. McGall, D2001-0083 (WIPO Apr. 3, 2001) (stating that evidence of a secondary meaning for a mark, sufficient to justify a finding of a common law trademark “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
As regards its rights in a mark, Complainant states that it owns the “active trademark” ARBITA, which was first used in commerce on September 24, 2001 regarding recruiting, staffing and advertising services, etc. Complainant submits printouts of three trademark applications filed before the USTPO on December 28, 2007: Serial Number 77/360,903 for Word Mark “ARBITA”, standard character mark, (Exhibit "D"); Serial Number 77/360,964 for Word Mark “ARBITA”, design plus words, letters and/or numbers, (Exhibit “E”), and Serial Number 77/360,952 for Word Mark “ARBITA THE WAY FORWARD”, design plus words, letters and/or numbers (Exhibit “F”). Each application is for a mark covering recruiting, staffing and advertising services, etc., of International Class 035. As to first use, Serial Number 77/360,903 and Serial Number 77/360,952 state, "FIRST USE: 20070301. FIRST USE IN COMMERCE: 20070301". The three applications are pending.
The panel in Amsec (see supra) found that the mere claim of use of the mark since 1992 together with a statement that the complainant’s gross sales exceeded US$7 million and a web page were held to be insufficient evidence of secondary meaning. In the instant case, Complainant merely states in its complaint that it is the owner of the active trademark in the term “Arbita,” and of the active domain names <arbita.net>, <arbita.info> and <arbita.biz>, as well as the former registrant of the domain name at issue. Complainant also states that in March 1996 its founders began using the mark RECRUITUSA in furtherance of its employment agency services, and that in 2001, Complainant’s team of public relations created the ARBITA trademark. Complainant submits printouts of the Internet Archive (or “Wayback Machine”) showing several snapshots of the website at the disputed domain name from September 24, 2001 until November 29, 2006.
The Panel believes that Complainant’s allegations and evidence provided with the Complaint are not sufficient to prove common law rights in a mark, since Complainant does not present the Panel with any details on sales conducted under such mark, or on advertising, or on surveys and media recognition, or any other proof to establish that its mark has become distinctive and has acquired secondary meaning. Based on the instant record the Panel concludes that Complainant has failed to prove that it has rights in the ARBITA unregistered mark.
In light of this finding, it is unnecessary to determine whether Respondent has rights or legitimate interests in respect of the domain name, or whether it has registered and is using the domain name in bad faith. See I4 Solutions, Inc. v. Miani, FA 1153871 (Nat. Arb. Forum April 24, 2008) (finding unnecessary to examine Policy ¶¶ 4(a)(i) and (ii), as Complainant must succeed under all three portions in order to grant the requested relief; thus, a denial under Policy ¶ 4(a)(iii) leads the Panel to decline to analyze the other portions of the Policy); see also 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 elements unnecessary.
Since Complainant failed to establish the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Roberto A. Bianchi, Chair,
Hon. Bruce Meyerson, Panelist
David P. Miranda, Panelist
Dated: August 5, 2008
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