Sukotai Corporation v. XtremeBoxing & Entertainment
Claim Number: FA0811001235561
Complainant is Sukotai Corporation (“Complainant”), represented by Teri Ellis Brown, of Smith, White, Sherma & Halpern, Georgia, USA. Respondent is XtremeBoxing & Entertainment (“Respondent”), represented by Ben Jackson, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <extremefightnight.com>, registered with Godaddy.com, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 1, 2008.
On November 25, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <extremefightnight.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 December 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 29, 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.
An electronic Response was received on December 29, 2008, however, the Forum deemed the Response deficient pursuant to ICANN Rule #5 because it was not received in hard copy prior to the Response deadline.
On January 5, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In its Complaint, Complainant contends the following:
- The disputed domain name is identical to Complainant’s EXTREME FIGHT NIGHT service mark.
- Respondent’s website markets fighting events between midgets, women in bikinis, wheelchair contestants and other fighting events. This kind of fighting has tarnished the trademark of Complainant. Respondent has not been commonly known by the disputed domain name. Respondent is not making a legitimate noncommercial or fair domain name, and intends to mislead and divert consumers as wells as tarnish the trademark at issue.
- Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, and engaged in a pattern of such conduct.
- When Complainant’s website is entered in the user is redirected to Respondent’s website. Respondent by using the domain name intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website. Respondent’s use of Complainant’s mark has resulted in the loss of business relationships with gyms and their athletes in events hosted by Complainant because of the type of events marketed by Respondent.
In his email to The Forum dated December 21, 2008, Respondent stated that he might be interested in selling his domain name rights for the right price along with signing a non-compete agreement. In his email of December 31, 2008, Respondent added that he has a common law trademark for the names “Extreme Fight Night” and “X-treme Fight Night”, and that he has a registered trademark for “Ben Jackson’s X-treme Fight Night”. He also stated that he has been conducting his entertainment novelty events for more than five years before Complainant’s company put on their events and registered trademark in 2006, and that he will continue to use his website and his legally entitled names. Should Complainant’s company wish to make an offer for his domain rights, he may consider it.
Complainant relies upon the EXTREME FIGHT NIGHT service mark registered to Complainant on the Supplemental Register of the USPTO. Since Complainant failed to present any evidence that it has ever used this service mark in connection with the services detailed in the mark application, i.e. that the service mark has acquired distinctiveness, the Panel concludes 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.
The disputed domain name is identical to the EXTREME FIGHT NIGHT service mark registered to the Complainant on the Supplemental Register of the USTPO under Reg. No. 3232043 on February 13, 2007. In the instant case, the relevant question is: Has Complainant rights in this mark? While trademarks and service marks registered on the Supplemental Register are not inherently incapable of distinguishing goods and services, a Complainant relying upon such mark must prove that its mark is distinctive. See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005), citing Bryant v. Yerke, AF-0315 (eResolution Oct. 15, 2000), where the panel established that in order to press its rights, if any, in the mark against others the applicant must establish through record evidence that the mark has acquired distinctiveness.
Complainant completely fails to mention if and how its mark acquired distinctiveness in respect of any of the “entertainment services in the nature of sporting competitions” of International Class 41 stated in the service mark application. In particular, Complainant fails to submit documents such as advertising, affidavits or any other evidence showing that its mark has ever been used. The requisite evidence is the one necessary for establishing common law rights on a mark. As recognized by this panelist in the unanimous decision in RecruitUSA Inc. v. Krueger, FA 1203764 (Nat. Arb. Forum Aug. 5, 2008), the standards required to this effect by panels 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.”); see also 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).
While Complainant asserts in its Complaint that it “has used the mark for the past five years”, implying that it began using this mark in December 2003, on the registration certificate issued by the USTPO it is stated that Complainant’s EXTREME FIGHT NIGHT mark was first used, and first used in commerce, on October 15, 2005. Complainant gives no explanation for the divergence between its statements before the USPTO and its assertions in this proceeding. In any case, Complainant presents no evidence whatsoever of use to the Panel. Also, according to the records of the TESS and TARR databases of the USTPO visited by the Panel on January 13, 2009 under his general powers, Respondent’s application for the BEN JACKSON’S X-TREME FIGHT NIGHT service mark filed on October 13, 2008 for registration in the Principal Register of the USPTO, states “FIRST USE: 20020813” and “FIRST USE IN COMMERCE: 20050224”. Thus, Respondent claims to have began using a mark that practically contains the entire Complainant’s mark before the “first use” dates indicated by Complainant in its EXTREME FIGHT NIGHT service mark application. Even if Respondent’s email of December 21, 2008 was sent to The Forum two days after the expiration of the deadline for the response, and even if there if no evidence on the record about Respondent’s use of the X-TREME (or EXTREME) FIGHT NIGHT terms before the date of first use stated by Complainant, Complainant is still required to prove distinctiveness.
Moreover, Complainant’s mark application contains the following disclaimer: “No claim is made to the exclusive right to use ‘EXTREME FIGHT’ apart from the mark as shown”. Since Complainant’s mark is weak, Complainant should all the more have presented proof of actual use of the entire mark to show distinctiveness or secondary meaning.
Based on the instant record and for the sole purposes of this proceeding, the Panel concludes that Complainant has failed to prove that it has rights in the EXTREME FIGHT NIGHT mark. In light of this finding, it is unnecessary to determine whether Respondent has rights or legitimate interests in respect of the disputed domain name, or whether it has registered and is using this domain name in bad faith. See I4 Solutions, Inc. v. Miani, FA 1153871 (Nat. Arb. Forum April 24, 2008) (finding it unnecessary to examine Policy ¶¶ 4(a)(i) and (ii), as the 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, Panelist
Dated: January 19, 2009
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