VRSIM, Inc. v. John Makara
Claim Number: FA0811001233521
Complainant is VRSIM, Inc. (“Complainant”), represented by Donald
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vrsim.com>, registered with Network Solutions, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 18, 2008.
On November 12, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <vrsim.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 15, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on December 15, 2008.
The National Arbitration Forum received correspondence from Complainant via e-mail on December 16, 2008, and December 22, 2008, regarding actions allegedly taken by Respondent subsequent to the filing of the Complaint. This correspondence was not submitted in conformity with the FORUM’s Supplemental Rule 7, and in light of the Panel’s findings on the merits of the present case, the Panel does not find it necessary to consider the substance of this correspondence.
On December 19, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the registrant of the service mark VRSim, USPTO registration number 2,888,040, registered on September 21, 2004.
Complainant alleges that Respondent lacks rights or legitimate interests in respect of the disputed domain name <vrsim.com>, on the basis that (1) Respondent has not used the domain name or a name corresponding thereto in connection with a bona fide offering of goods or services; (2) Respondent was first made aware of the domain name by Complainant; (3) Respondent has not been commonly known by the domain name, nor acquired trademark or service mark rights identical or similar to the domain name; and (4) Respondent has not made a legitimate noncommercial or fair use of the domain name.
Complainant alleges that the domain name has been registered in bad faith on the basis that (1) Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; (2) Respondent has registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, and despite repeated demands has refused to transfer the domain name to Complainant; (3) Respondent took unfair advantage of his role as an agent for Complainant as a web service provider to register the domain name for his own benefit as opposed to the benefit of Complainant; and (4) Respondent has failed to transfer the domain name to Complainant despite repeated assurances to the contrary.
Respondent states that CSI (apparently an entity related to Respondent) registered the disputed domain name “in order to pursue business use . . . in advertising and marketing.” In response to Complainant’s contentions regarding rights and legitimate interests, Respondent states that CSI acquired the domain name after the previous registrant did not renew it; that CSI is engaged in sales and service of computer parts and systems, and has acquired “countless domain names” to support these offerings; and that CSI has used the disputed domain name “from time to time.”
Respondent also takes issue with Complainant’s allegations of bad faith. Respondent acknowledges that Complainant has demanded transfer of the disputed domain name, but states that CSI has not solicited Complainant for the purpose of selling the name.
The Panel finds that Complainant has failed to meet its burden of proof that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
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 contends that the disputed domain name is similar to its registered mark VRSim. Complainant’s mark is registered on the Supplemental Register of the U.S. Patent and Trademark Office, registration number 2,888,040. After the USPTO refused registration of the mark on the Principal Register on the ground that it is merely descriptive of virtual reality simulation services, Complainant amended its application to seek registration on the Supplemental Register.
Registration of a claimed mark on the Supplemental Register, however, is insufficient to show that Complainant has rights in the mark for purposes of the Policy.
Under United States law, marks that are
merely descriptive, and that have not been shown to have acquired
distinctiveness, may be registered on the Supplemental Register, but that
registration does not confer any of the usual presumptions that accompany a
mark registered on the Principal Register (such as prima facie evidence of
validity, ownership, and distinctiveness).
Thus, the fact of a Supplemental Registration is no evidence whatsoever
the Complainant owns trademark rights in the phrase RELIGION NEWS SERVICE. See Rodale,
Advance News Service Inc. v. Vertical Axis, Inc. / Religionnewsservice.com, D2008-1475 (WIPO Dec. 11, 2008). See also First Am. Real Estate Solutions L.P. v. Manila Industries, Inc., FA758614 (Nat. Arb. Forum Sept. 18, 2006) (holding that “the fact that [a] mark is registered on the Supplementary Register does not advance a finding of trademark rights in such mark”).
As Complainant offers no other basis on which the Panel might find the requisite rights in the mark, and in particular neither contends nor provides evidence that it has common-law trademark rights, the Panel finds that Complainant has failed to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Because the Panel’s finding on the first element required by Paragraph 4(a) of the Policy is dispositive of the matter before it, the Panel declines to reach the other two elements.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David E. Sorkin, Panelist
Dated: January 2, 2009
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