Claim Number: FA0905001262224
Complainant is The Cedarville University (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cedarvillealumni.us>, registered with Godaddy.com, Inc.
The undersigned certify that they have acted independently and impartially and that to the best of their knowledge, they have no known conflicts in serving as Panelists in this proceeding. Paul M. DeCicco, Esq., David H. Bernstein, Esq., and Hon. Carolyn Marks Johnson (Chair) sit as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 11, 2009; the National Arbitration Forum received a hard copy of the Complaint May 13, 2009.
On May 12, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cedarvillealumni.us> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with usTLD Dispute Resolution Policy (the “Policy”).
On May 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 3, 2009, 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 June 3, 2009.
A timely Complainant’s Additional Submission was received June 8, 2009.
On June 12, 2009, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, Esq.; David H. Bernstein, Esq.; and Hon. Carolyn Marks Johnson (Chair) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
1. Respondent registered a domain name that is identical to or confusingly similar to a mark in which Complainant has rights under the common law.
2. Respondent has no rights to or legitimate interests in the domain name containing in its entirety Complainant’s protected mark.
3. Respondent registered and used the name in bad faith.
B. Respondent raised the following points in its Response:
1. Respondent urges that the disputed domain name is not identical to and is not confusingly similar to Complainant’s mark, if any.
2. Respondent contends that Complainant “does not hold the CEDARVILLE mark as a matter of common law or registered trademark.”
3. Respondent represents that some 63 other entities use CEDARVILLE in their name or mark.
4. Respondent maintains that other “Cedarville Alumni” sell goods under the Cedarville mark in addition to the University and that alumni throughout the country do the same relative to other institutions.
5. Respondent, who suggests that he is an
attorney, avers that he is a
6. These sites, Respondent urges, are the subject of a co-pending complaints filed simultaneously with this one under the ICANN Uniform Domain Name Dispute Resolution Policy (“UDRP”), identifying seven (7) other domain names.
7. Lastly, Respondent notes that Complainant did not demonstrate bad faith registration or use by Respondent.
C. Complainant filed an Additional Submission containing allegations largely covered in the original Complaint. The Panel found that these matters were adequately addressed in the Complaint and pursuant to Rule 12, that the Panel would have had no need to seek an Additional Complaint. Therefore, we do not formally address it.
1. Complainant is The Cedarville University of Cedarville, Ohio.
2. Cedarville is “an accredited, Christ-centered, Baptist university of arts, sciences, professional, and graduate programs.”
3. Cedarville (formerly The Cedarville College)
filed Articles of Incorporation with the State of
4. However sparse the information about Complainant’s development expenditures for the purposes of developing secondary association with the mark, producing graduates for 122 years should indicate consistent use of the mark, its distribution by the accomplishment of alumnae, such as would support secondary association for the mark such as would qualify for common law rights in the mark.
5. Complainant also sells clothing, paper goods, radio broadcasting services and other goods and services related to educational services under the mark.
6. Respondent registered the disputed domain name February 16, 2009, some 122 years after Complainant’s first use of the mark.
7. Respondent showed no rights to or legitimate interest in Complainant’s mark.
8. Respondent established no rights to or legitimate interests in representing the alumni of Complainant.
9. Respondent showed no activity such as would constitute bona fide or legitimate use of the domain name.
10. Considering the totality of Respondent’s presentation, Respondent evidences bad faith registration and use (i.e. passive holding as a parking site).
Paragraph 15(a) of the Rules for usTLD 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 Complainant to 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) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The Panel notes that the Policy and Rules are nearly identical to the UDRP and its rules, although there are a few distinctions. First, the Policy, which applies to domain names registered in the .us country code top level domain (“ccTLD”) was promulgated by the Unites States Department of Commerce, not by ICANN. Second, and most notably, under Policy ¶ 4(c)(iii), the Complainant need prove only bad faith registration or use; not both as is required by the UDRP. Precendent from UDRP cases may nevertheless be relevant to the extent a UDRP case directly addresses bad faith use and registration separately. Finally, the Policy adds another example of legitimate interests that is not contained in the UDRP; namely, whether Respondent is the “owner or beneficiary of a trade or service mark that is identical to the domain name.” See Policy ¶ 4c(i). Notwithstanding these differences (which are addressed below, to the extent relevant), given the similarity between the Policy and the UDRP, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant, in its Complaint asserts that it is not required to own a registration in order to establish rights in that mark where it shows secondary meaning attaching to its mark. The Panel agrees; Complainant need not have a registration to establish rights in a mark under Policy ¶ 4(a)(i) provided that Complainant establishes common law rights in the mark through a sufficient showing of secondary meaning. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that UDRP ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under UDRP ¶ 4(a)(i)).
Complainant further asserts that it has used the CEDARVILLE mark for more than 120 years in connection with the education of thousands of students—first as a college and then university—and in more recent years with the sale of clothing, paper goods, and radio broadcasting services related to education. Respondent has not challenged Complainant’s success in producing thousands of graduates, which is itself a sufficient assertion of fact to support a finding that Complainant established secondary meaning in the CEDARVILLE mark. In addition, Complainant submitted, as evidence of its long-time use of this mark, a published history describing Complainant’s history and its use of the CEDARVILLE mark for more than a century. Complainant’s evidence is sufficient to show secondary meaning in the CEDARVILLE mark, even if geographically limited, and thus Complainant has shown common law rights under Policy ¶ 4(a)(i) of the disputed domain name. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of UDRP ¶ 4(a)(i)).
Respondent nevertheless suggests that Complainant lacks trademark rights
because the CEDARVILLE mark is either generic or descriptive. The Panel does not agree that the mark as
used is generic. Although it may be
generic for the town of
Although the Panel is mindful of the dissent’s concern in this regard, the Panel does not believe that a Complainant in an administrative proceeding under the Policy needs to produce voluminous evidence of secondary meaning. Particularly in the context of proceedings like this one as well as those conducted under the UDRP, Panels have accepted as sufficient proof of secondary meaning fairly bare bones assertions of fact showing that a mark has been used in commerce. See, e.g., Mobile Communication Service, Inc. v. WebReg. RN. D2005-1304 (WIPO Feb. 24, 2006); see also Pensions Advisory Serv., Ltd. V. Labitrav. D2008-116 (WIPO Oct. 8, 2008). In this case, the evidence of Cedarville’s use of its name for more than one hundred years to educate students, coupled with Respondent’s failure to raise any significant challenge to the fact of Complainant’s use of its mark in commerce, is sufficient evidence of secondary meaning for purposes of this proceeding, although Respondent of course maintains the right to challenge that determination and more generally the Panel’s award under Paragraph 4(k) of the Policy.
Complainant contends that Respondent’s <cedarvillealumni.us> domain name is confusingly similar to Complainant’s CEDARVILLE mark because the disputed domain name contains Complainant’s entire mark, adds the descriptive term “alumni,” which is commonly used in the industry in which Complainant engages in business, and adds the country code top-level domain (“ccTLD”) “.us.” The Panel finds that the <cedarvillealumni.us> domain name is confusingly similar to Complainant’s CEDARVILLE mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under UDRP ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
It is Response, Respondent contends that the <cedarvillealumni.us> domain name is comprised of generic terms, or of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark. Whether the domain name contains generic or descriptive terms is beside the point; under Policy ¶ 4(a)(i), the only questions are whether Complainant has rights in the CEDARVILLE mark and whether the disputed domain name is identical to or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”). To the extent Respondent suggests with this argument that it should have the right to use these alleged generic or descriptive terms, that is an argument more properly considered in connection with the second and third factors, as listed in Policy ¶¶ 4(a)(ii) and (iii).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to and Legitimate Interests:
Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleged sufficient facts to meet its prima facie burden. Complainant contends that Respondent has never owned or used any service marks or trademarks that reflect the <cedarvillealumni.us> domain name. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Complainant claims that Respondent is listed as “Mark Miller” in the WHOIS information and that nothing in the record suggests that Respondent is commonly known by the <cedarvillealumni.us> domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant further asserts that the <cedarvillealumni.us> domain name resolves to a website that displays several pay-per-click (“PPC”) hyperlinks to various third-party websites, some of which are in direct competition with Complainant. Complainant also alleges that Respondent receives click-through fees through these hyperlinks. These assertions all support a prima facie case of no legitimate interests, and thus the burden of proof shifts to Respondent to come forward with evidence showing that it has rights to or a legitimate interest in the domain name.
Respondent disputes Complainant’s arguments and contends that it has rights in this domain name. First, Respondent denies that it received any funds from the disputed domain name, making the evidence on this issue disputed and not established by either party. However, even if the Panel were to credit that assertion, it still would not give Respondent rights in this domain name. By allowing the registrar to post a PPC parking page, the Respondent has allowed a use that is not legitimate, and includes advertising that diverts internet users from Complainant. Therefore, any posting of a PPC parking page, even if the revenue flows to the registrar rather than the Respondent, cannot support a finding of a legitimate interest in the domain name, because such use is not a bona fide offering of goods and services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)).
argues that it has rights in the domain name because the domain name is
comprised of descriptive terms. In support of that assertion, Respondent
alleges that he is an alumnus of
Respondent also argues that both words in the <cedarvillealumni.us> domain name are generic and of common use and that, therefore, Complainant does not have an exclusive monopoly to the terms on the Internet. The Panel is not persuaded. Complainant is not claiming monopoly rights in the word Cedarville, but rather only for the Cedarville mark when used in connection with university and related services. There also appear to be other businesses with rights to use that word as a mark in connection with their different goods and services. The issue for the Panel to decide is whether Respondent has a legitimate interest, not whether some other parties (such as Cedarville Wrecker and Towing Service, if any such business exists) might have a legitimate interest. Because Respondent has not shown any such legitimate interest under the policy, the Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Under the usDRP, Complainant need
only show bad faith registration or use. Although Respondent may have
an argument that his registration of the name was not in bad faith, given yet
unproved intent to use it for protected expression, this domain is being used
for improper, commercial PPC advertising on a parked page, which is not a
legitimate use and supports findings of bad faith. See Am. Airlines, Inc. v.
Although Respondent argues that he is not profiting from the PPC links on the website, it is uncontroverted that Respondent allowed those links to be posted on the website. As such the parking page, with its advertisements for schools that compete against Complainant, created a likelihood of confusion.
Considering the totality of
Respondent’s actions, the Panel finds that Respondent registered and used the
disputed domain name in bad faith under Policy ¶ 4(b)(iv). See
Reverse Domain Name Hijacking
Respondent alleges that Complainant engaged in Reverse Domain Name Hijacking. The Panel disagrees. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the [UDRP], Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the UDRP).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cedarvillealumni.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson (Chair)
David H. Bernstein, Esq.
Dated: July 1, 2009.
I respectfully dissent. Complainant claims common law trademark rights in CEDARVILLE, a geographically descriptive mark. A party claiming trademark rights in a generic or descriptive mark must show that such mark has acquired secondary meaning through use. “Secondary meaning" is acquired when "in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself." Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (U.S. 1995) As discussed below, I do not see that Complainant has presented even a “bare bones” assertion of facts showing how the CEDARVILLE mark was, or is, used in commerce, or that the public identifies that mark with the source of Complainant’s services rather than the product itself. Therefore, the record does not support a finding that Complainant has rights in CEDARVILLE pursuant to Policy ¶ 4(a)(i).
In determining whether a mark has acquired secondary meaning, tribunals consider several factors. Direct evidence of secondary meaning includes: (a) direct consumer testimony; and (b) consumer surveys. Circumstantial evidence of secondary meaning includes: (c) exclusivity, length, and manner of use; (d) amount and manner of advertising; (e) amount of sales and number of customers; (f) established place in the market; and (g) proof of intentional copying. See Echo Travel, Inc. v. Travel Assoc., Inc., 870 F.2d 1264, 1267 (7th Cir. Wis. 1989) citing Vaughan Mfg. Co. v. Brikam Int’l, Inc., 814 F.2d 346, 349 (7th Cir. 1987); see also Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901, 907 (7th Cir. 1983); see also Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 380 (7th Cir. 1976); see also Am. Scientific Chem., Inc. v. Am. Hosp. Supply Corp., 690 F.2d 791, 793 (9th Cir. 1982); see also McCarthy §§ 15:9-15:20.
The factors considered … [in] determining whether a mark has acquired secondary meaning include: "(1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer, (2) the degree and manner of advertising under the claimed trademark, (3) the length and manner of use of the claimed trademark , (4) whether use of the claimed trademark has been exclusive," Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1357, 228 U.S.P.Q. (BNA) 346, 350 (9th Cir. 1985) (en banc), (5) whether defendant engaged in "exact copying" of plaintiff's purported mark, see Committee for Idaho's High Desert, Inc. v. Yost, 92 F.3d 814, 822, 39 U.S.P.Q.2D (BNA) 1705, 1711 (9th Cir. 1996), and (6) whether defendant's use of the purported mark has led to actual [*14] consumer confusion, see Adray v. Adry-Mart, Inc., 76 F.3d 984, 987, 37 U.S.P.Q.2D (BNA) 1872, 1875 (9th Cir. 1995).
Riggs Mktg., Inc. v. Mitchell, 1999
UDRP panels have likewise urged that particular evidence is required to show that an otherwise generic or descriptive mark has acquired distinctiveness and is a trademark for the purposes of Policy 4(a)(i). See Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to UDRP ¶ 4(a)(i); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding that when a disputed domain name, such as <187.com>, is made up entirely of generic or common terms, “good evidence will be needed to show a significant secondary meaning and, above all, one associated with Complainant.”).
It is Complainant’s burden to not only plead, but also prove that that its descriptive mark has acquired distinctiveness and thereby is a protectable trademark under Policy ¶4(c)(i). There is no presumption in Complainant’s favor. Complainant must prove its case via competent evidence, not by conjecture or innuendo. The legal burden to prove that a mark has acquired distinctiveness should not be attenuated because of the abbreviated nature of the instant proceeding. Nor should it be increased. To do either would indicate an arbitrary predisposition in favor the benefiting party’s alignment. Expedience should not be served at the cost of justice.
Formal rules of evidence may be suspended or relaxed and often are within UDRP proceedings. Thereby, evidence which otherwise would be excluded for lacking proper foundation or containing hearsay is nevertheless admitted for a panel’s consideration. However, the relevant weight of such evidence or its sufficiency does not change. There is no authority that I am aware of that stands for the proposition that sufficient evidence of secondary meaning requires either volumes or even pages to present. But to the extent that it does in particular cases, it does so independent of the nature of the proceedings or forum.
Complainant proffers three documents ostensibly in support
of CEDARVILLE having acquired distinctiveness. First, there is the affidavit of
Complainant’s Chief Financial Officer. Assuming the statements therein to be
true, the short affidavit describes
Second, Complainant presents a “published history describing
Cedarville’s long standing use of the Cedarville mark.” But on reviewing this
document there is little if anything therein that addresses the issue of
whether or not CEDARVILLE, or any other mark, is associated in the minds of the
public with the source of Complainant’s services. There isn’t even a claim that
students or the community have come to know
Third, Complainant submits a copy of the Articles of
Incorporation of Cedarville University as filed in 1887. The articles merely corroborate that
Complainant’s enterprise was founded in 1887 as
Complainant presents no evidence in the form of consumer testimony or a consumer survey regarding the association of the CEDARVILLE mark with Complainant’s educational services and the public’s recognition thereof. While there is some indication of the “length of use” which might be inferred from documentation concerning the founding of Cedarville College, on closer look it is unclear what particular mark was being used, CEDARVILLE UNIVERSITY, CEDARVILLE or some other mark entirely, when it was being used, whether the mark was exclusive, and in what manner CEDARVILLE is used in commerce.
Complainant submits neither a catalog, brochure, nor
advertisement of the type generally used by educational institutions, nor any
other device containing the CEDARVILLE mark. Remarkably there are no exemplars
in the record showing the CEDARVILLE mark is being used in commerce in association
with any goods or services. As the majority notes there is some indication of
sales and customers, as well as
The Panel’s majority grounds its finding that the at-issue
mark acquired secondary meaning on
Furthermore, I disagree with the majority’s conclusion that “the fact that Respondent has not challenged Complainant’s success in producing thousands of graduates … is a sufficient assertion of fact to support a finding that Complainant established secondary meaning in the CEDARVILLE mark.” The burden of proof is on Complainant not Respondent. “[P]roducing graduates” is no more evidence of acquired distinctiveness in CEDARVILLE than “producing oranges” is evidence of acquired distinctiveness in the suggestive mark SUNKIST (sun kissed). Respondent’s failure to respond to Complainant’s dubiously relevant contention admits nothing by silence or otherwise.
The foregoing discussion is not to say that Complainant might not have produced compelling evidence had it desired to, only that it did not. But since it did not, weight cannot be given to what it might have done. The burden on a complainant to show that it has rights in a domain name under paragraph 4(a)(i) is not trivial and predicates the ability to bring an action under the Policy. For the reasons discussed above Complainant fails to carry its burden.
Because Complainant has not established rights in the mark, we need not 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 the complainant must prove all three elements under the UDRP, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca 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 UDRP ¶ 4(a)(i)). Therefore, I would find Complainant fails to demonstrate that it has rights in the disputed domain name as required by Policy 4(a)(i) and that relief should be denied.
Paul M. DeCicco, Esq.
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