Go Wireless Inc. v. Preferred Capital Holdings LLC
Claim Number: FA0909001284124
Complainant is Go Wireless Inc. (“Complainant”), represented by Tom
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gowireless.com>, registered with GoDaddy.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 15, 2009.
On September 14, 2009, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <gowireless.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 September 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 7, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2009, pursuant to
Complainant's request to have the dispute decided by a three-member Panel, the
National Arbitration Forum appointed
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gowireless.com> domain name is identical or confusingly similar to Complainant’s GOWIRELESS mark.
2. Respondent does not have any rights or legitimate interests in the <gowireless.com> domain name.
3. Respondent is currently not making a fair use of the <gowireless.com> domain name.
B. Respondent failed to submit a Response in this proceeding.
The Complainant has no registered trademark rights to GOWIRELESS, but claims to have acquired common law trademark rights.
The Panel notes that Complainant does not accuse Respondent for bad faith registration of the disputed domain name, only that Respondent is not making a fair use of the same.
The <gowireless.com> domain name was originally registered on February 23, 1996.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 Complainant claims to have acquired a common law trademark right in the use of GOWIRELESS through continued use of the mark in commerce for nearly 15 years, namely since at least 1995. Complainant states that the disputed domain name is confusingly similar to the alleged GOWIRELESS mark, as well as to Complainant’s domain name <gowireless.net> (used by Complainant since 1999).
Registration of a trademark with a governmental authority is not necessary in order to establish rights in the mark under Policy ¶ 4(a)(i) provided that Complainant can establish common law rights through a sufficient showing of secondary meaning, see Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant asserts that it has used the trademark GOWIRELESS in connection with the retail sales of tools and accessories essential to the business of wireless communication, sales, marketing, software development and financial management since 1995. However, the Panel notes that Complainant has offered absolutely no evidence in support of its use of GOWIRELESS as a trademark.
Even if such evidence had been presented, the Panel is in doubt whether common law rights could have been obtained before Respondents registration of the disputed domain name (February 23, 1996), which seems to be just months after Complainant’s first use of GOWIRELESS.
Thus the Complainant has provided insufficient evidence that it has common law rights through extensive and continuous use that has resulted in the public associating the term with the Complainant. Complainant’s simple statement of common law rights is not enough.
In addition, considering the fact that “GO” and “WIRELESS”, even when combined in one word, are merely generic words, the proof required in order to establish common law rights must be rather solid and substantiated. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating
extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); 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).
In the absence of further evidence, the Panel therefore concludes that the Complainant has not been able to prove that it has, in the meaning of the Policy, protected trademark rights for the term GOWIRELESS.
As the Complainant has failed to present sufficient proof of rights in the GOWIRELESS mark according to Policy ¶4(a)(i) it is unnecessary 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 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 Policy ¶ 4(a)(i)).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Anne M. Wallace,
Dated: October 21, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum