Oasis Technology Partners, Inc. v. James Dale c/o Administrative Contact
Claim Number: FA1003001310642
Complainant is Oasis Technology Partners, Inc. (“Complainant”), represented by Merton
E. Thompson, of Burns & Levinson LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oasis.com>, registered with Enom, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Debrett G. Lyons, Judge Bruce Meyerson and G. Gervaise Davis III, Esq. as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2010.
On March 2, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <oasis.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on March 4, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 23, 2010.
On April 8, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett G. Lyons (chair), Judge Bruce Meyerson and G. Gervaise Davis III, Esq. as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts trademark rights in the word OASIS and alleges that the disputed domain name is identical to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
Respondent broadly denies those allegations.
So far as relevant to the Discussion which follows, the factual findings are that:
1. Complainant offers a broad range of computer and website design and consultancy services[i].
2. Complainant offers those services under the trademarks OASIS and OASIS TECHNOLOGY PARTNERS and has filed United States Federal Trademark Application Nos. 77/886,504 on December 4, 2009 and 77/886,517 on December 8, 2009 seeking registration of those trademarks. Both applications carry a first use in commerce claim of February 1, 2001.
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.”
Policy ¶ 4(a) 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.
Policy ¶ 4(a)(i) requires a two-fold enquiry - a threshold investigation of whether a complainant has rights in a trademark, together with an assessment of whether the trademark and the domain name are identical or confusingly similar.
If Complainant here can show that it has trademark rights in OASIS then there is no doubt that the domain name <oasis.com> is legally identical to the trademark[ii].
There is ample authority for the proposition that a US Federal trademark registration is prima facie evidence of rights in a trademark[iii]. Nonetheless, Complainant refers only to a recently filed application for registration for the trademark OASIS. There is no evidence before the Panel that the application has matured to registration since the Complaint was filed. Accordingly, Complainant does not establish rights in the trademark through registration.
Nonetheless, a trademark registration is not required by Policy ¶ 4(a)(i) provided Complainant can establish common law rights in the trademark[iv]. The issue for the Panel is whether Complainant has done enough to show common law trademark rights.
Although Complainant chose to file the Complaint with the National Arbitration Forum, the Complaint references decisions under the Policy made by panelists of the other major forum administering the UDRP, the World Intellectual Property Organisation (WIPO). In addition to publishing its decisions under the Policy, WIPO has also published a so-called “Overview of WIPO Panel Views on Selected UDRP Questions.”
That Overview poses the following Q&A of relevance to the discussion here:
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
Uitgeverij Crux v. W. Frederic Isler D2000-0575, Transfer
Skattedirektoratet v. Eivind Nag D2000-1314, Transfer
Amsec Enterprises, L.C. v. Sharon McCall D2001-0083, Denied
Australian Trade Commission v. Matthew Reader D2002-0786,
Decisions of this Forum have underscored those same points.
Complainant contends that it has been in the business of providing creative services for clients in the sports, clothing, entertainment, travel and technology industries since 2001. Complainant asserts that it has engaged in extensive use and promotion of the OASIS trademark and has established a valuable goodwill in the trademark in its industry. Complainant further asserts that consumers have come to associate the trademark with Complainant and its creative services.
Nonetheless, the Panel notes that these are bald claims unsupported by any proof of reputation of the kind described above. The Panel is reminded of what was said in 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[v].
In addition, even if the Panel were to assume a valid trademark, it would also have to consider here the fact that “Oasis” appears to be a highly generic term which would require a showing of uniqueness in order to overcome that aspect as well.
In the result, the Panel is unable to attribute common law rights to the trademark and so the necessary consequence is that Complaint has failed to establish trademark rights under the first limb of the Policy.
No findings required[vi].
Having failed to establish at least one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Debrett G. Lyons
Judge Bruce Meyerson
G. Gervaise Davis III, Esq.
Dated: April 20, 2010
[i] Including, motion graphics, editorial consultancy and designing, creating and maintaining Web sites for third parties, designing, creating and maintaining back-end solutions and software functions, designing, creating and maintaining front-facing applications, computer consulting services in the field of information architecture, design services for interactive branding, social media program development and social networking applications, strategic and communications planning services, integrated analytic services and front-end Web site development.
gTLD is to be ignored since it adds no distinctiveness to the domain name. See
Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar; see also Jerry Damson, Inc. v.
[iii] See Reebok Int’l Ltd. v.
[iv] See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); 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 Policy ¶ 4(a)(i)); see also 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).
[v] See also Falwell v. Cohn, D2002-0184 (WIPO June 3, 2002) (“Complainant claims a common law trademark in his personal name. The Complainant has failed to show that his name, well known as it is, has been used in a trademark sense as a label of particular goods or services.”); see also Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness).
[vi] 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 Policy, 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 Policy ¶ 4(a)(i)).