World2Work Corporation v. Kurt Reuss
Claim Number: FA0807001214404
Complainant is World2Work Corporation (“Complainant”), represented by John
A. Franczyk, of John Franczyk & Associates P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fired.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Prof. Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 10, 2008.
On July 9, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fired.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 July 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 11, 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 24, 2008.
On August 4, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Prof. Darryl C. Wilson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it is the owner of the registered mark FIRED and that Respondent registered the domain name <fired.com> which is identical and/or confusingly similar to it’s registered trademark. Complainant further contends that Respondent has no rights or legitimate interest in the disputed domain and further asserts that Respondent registered and is using the disputed domain name in bad faith.
Respondent contends that it did not register the domain name in bad faith nor is it using the disputed domain in such a fashion. Respondent notes that Complainant does not assert knowledge of Complainant’s mark at the time <fired.com> was registered nor has there been an attempted sale of the domain name, or any attempt to divert business from the Complainant. Respondent further contends that Complainant’s mark is generic and thus Complainant has no valid rights to enforce against Respondent’s domain name.
Complainant is a corporation engaged in the business of human resources management, employment hiring, recruiting, placement, staffing and career networking services. Complainant is the owner of the registered service mark FIRED for the services mentioned above. Complainant’s first use in commerce is indicated as September 12, 2004 and the date of registration per U.S. Reg. No. 3,269, 038 is July 24, 2007. Complainant states that it has used the mark regularly and continuously since 2004 and that, “Consistent with this regular and continued use, Complainant’s mark has acquired secondary meaning and is uniquely identified in the marketplace for Complainant’s services as a single source-identifying trademark.”
Respondent is an individual who registered the disputed domain name <fired.com> on April 16, 1999. The domain does not presently resolve to an active site nor does Respondent indicate any past use or future plans for the disputed domain.
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.
Complainant has not adequately established this element.
Although the disputed domain name is for all practical purposes
identical to Complainant’s registered mark, the undisputed facts indicate that
Respondent’s creation and registration of the domain name predate Complainant’s
use and registration of their service mark by several years. As Complainant’s use is junior to Respondent’s,
Complainant cannot satisfy Section 4(a)(i) of the UDRP. See B&V
Assocs., Inc. v. Internet Waterway, Inc.,
FA 147531 (Nat. Arb. Forum Apr. 15, 2003) (“[T]he Policy . . . was intended to protect against infringement of existing
trademark rights by identical or confusingly similar domain name registrations.
Therefore, the Panel concludes that Policy ¶ 4(a)(i)
assumes that Complainant's rights must predate Respondent's domain name
registration . . .”); see also
While it is not normally required that the issue of genericness be resolved in the UDRP proceeding, especially when Complainant is the owner of a valid registration, it is important to address the issue when the mark and the domain consist of one or more common terms. Complainant’s belief that its registration gives it “an exclusive right to use the word ‘FIRED’ in commerce…” and that such use extends to a “right to use that word as a domain name and to register the domain <fired.com> as its own domain name” is sorely misguided. Trademark rights do not automatically confer domain name rights and vice-versa. Procurement of one right simply provides an improved opportunity for the other. Complainant’s rights in its mark are restricted by time and nature. The nature of the mark is one of limited scope based on proven secondary meaning and cannot be extended to prevent others from continuing to use that word in its normal descriptive sense. The timing of the registration further limits its scope in light of the pre-existing rights established by senior users. Complainant’s unsupported self-serving statement that is has established secondary meaning is insufficient to bestow the breadth of rights it claims. See Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Bald assertions of consumer knowledge are not an adequate form of evidence to establish secondary meaning in a name.”).
Because Complainant has not satisfied Policy Section 4(a)(i) the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Because Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Prof. Darryl C. Wilson, Panelist
Dated: August 18, 2008
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