Thomas Alarm Systems, Inc. v. cHEXx Partners
Claim Number: FA1001001303478
PARTIES
Complainant is Thomas Alarm Systems, Inc. (“Complainant”), represented by Thomas O'Brien,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <thomasalarmsystems.com>, registered with Network Solutions, Inc.
PANEL
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 22, 2010.
On January 19, 2010, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <thomasalarmsystems.com> domain name is registered with Network Solutions, Inc. and that the 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 January 27, 2010, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of February 16, 2010 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
A timely Response was received and determined to be complete on February 16, 2010.
An Additional Submission was received from Complainant on February 22, 2010 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On
February 25, 2010, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel,
the National Arbitration Forum appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- Complainant, Thomas Alarm
Systems, Inc., is an
- Within the scope of his employment, Mr. Sorich was directed to obtain the disputed domain name on behalf of Complainant. However, he arranged for Respondent to acquire the name.
- Mr. Sorich’s employment with Complainant was terminated, but he refuses to transfer the disputed domain name to Complainant.
- For the last seven years, Complainant has paid all costs associated with the disputed domain name.
- The disputed domain name is literally the same as Complainant’s name.
- Respondent has no legitimate interest in the disputed domain name. Respondent has never been known as that name. Respondent’s owner seeks only to frustrate his former employer. Respondent is making neither noncommercial nor fair use of the disputed domain name.
- Respondent is making bad faith use of the name in attempting to gain business wrongfully by deceiving unsuspecting customers who seek to contact Complainant.
B. Respondent
- David Sorich paid for the disputed domain name with his own money, which was never reimbursed by Complainant, and rightfully registered the name under Respondent’s ownership.
- Complainant has never obtained a
registered trademark nor used its name for business in the manner of a
trademark. At least one other company,
operating in the
- Complainant’s expenses relative to the disputed domain name are solely for hosting a website located at the name, not for registration of the name.
- Respondent has never sought to conduct business under the disputed domain name. On the contrary, Respondent has made the name available for Complainant’s use. Complainant removed Mr. Sorich’s name and contact information from the website found at the disputed domain name after his termination, but this is not indicative of bad faith on the part of Respondent.
C. Complainant’s Additional Submission
- Complainant did indeed reimburse Respondent $55USD for registration of the disputed domain name.
- Respondent has denied Complainant access to the disputed domain name. This action disrupts Complainant’s business and is thus indicative of bad faith use of the name.
FINDINGS
Complainant is a
company doing business in the state of
Respondent is the owner of the disputed domain name, having registered the name on December 9, 2002.
DISCUSSION
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 first requirement of a complainant in a UDRP case is to establish that it has a trademark worthy of protection. Registration of that complainant’s mark in a lawful jurisdiction has been considered sufficient to satisfy this requirement by prior UDRP panels. See, for example, Vivendi Universal Games and Davidson & Assocs., Inc. v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“…Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); and Kraft Foods, Inc. v. Nowon Uknow, D2005-1153 (WIPO Jan. 1, 2006).
Failing to submit evidence of a trademark registration, a complainant may establish its trademark rights alternatively through a satisfactory showing of common law rights in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (“…Complainant can rely on its common law rights to establish rights pursuant to Policy ¶ 4(a)(i).”); and ProCPR, LLC v. Name Admin. Inc. (BVI), D2007-0823 (WIPO Aug. 13, 2007) (“The Panel readily accepts that an individual or entity may in certain circumstances be entitled to a common law trademark or service mark without registering the mark with the appropriate authority.”).
In this case, Complainant has presented the Panel with no evidence of a trademark registration in any jurisdiction. Moreover, Complainant has provided almost no evidence that it possesses common law rights in its proposed mark, THOMAS ALARM SYSTEMS. Complainant’s sole allusion to common law ownership of that trademark is its provision to the panel of articles of incorporation indicating that Complainant has been in business since 1984. While such a long duration of continuous operation might suggest that Complainant may have indeed established common law rights in its mark – at least in a limited geographical region – the Panel requires a much greater showing to conclude that Complainant has sustained its burden in demonstrating that such rights exist. See Maritime-Ontario Freight Lines Ltd. v. Magic Domain, D2007-0202 (WIPO Apr. 17, 2007) (“…where Complainants rely on establishing common law trademark rights, the onus is fair and square on the Complainant to provide adequate evidence to support such a finding.”). For example, the Panel has been provided by Complainant with precisely no evidence regarding the size and scope of its operations in general; or, with respect to business conducted under its mark specifically, the volume of revenues, extent of advertising and/or promotion, or notoriety in the press or trade journals. See, for example, Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (“Relevant evidence of secondary meaning [i.e., common law trademark rights] includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); and Australian Trade Comm’n v. Reader, D2002-0786 (WIPO Nov. 12, 2002). As a result, the Panel cannot conclude that Complainant possesses either registered or common law trademark rights in the mark, THOMAS ALARM SYSTEMS.
In line with the foregoing reasoning, 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 the Complainant has rights.
Because Complainant has not sustained its burden of proof with respect to the first element necessary in this proceeding, the Panel need not analyze whether Complainant would have succeeded in proving the final two elements.
In reaching its conclusions above, the Panel expressly notes that it is not passing judgment on any claims Complainant may have regarding the disputed domain name based upon Complainant’s prior employment of Respondent’s owner. An analysis of such possible explicit or implicit contractual obligations between employer and employee is far beyond the scope of a UDRP proceeding, and the Panel is limited to consideration of only the elements specifically enumerated in the Policy.
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dennis A. Foster,
Panelist
Dated: March 12, 2010
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