NATIONAL ARBITRATION FORUM

DECISION

Kaizen Applications, LLC v. Private Whois Service
Claim Number: FA1005001324496

PARTIES

Complainant is Kaizen Applications, LLC (“Complainant”), represented by Siraj Ahmed, Massachusetts, USA.  Respondent is Private Whois Service (“Respondent”), represented by Jack Bowes, Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <blackhatworld.org>, registered with Internet.bs Corp.

PANEL

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 Panellist in this proceeding.

Robert A. Fashler as Panellist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2010.

On May 14, 2010, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <blackhatworld.org> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name.  Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 May 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 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 postmaster@blackhatworld.org.  Also on May 28, 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 June 17, 2010.

On June 24, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert A. Fashler as Panellist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A.                 Complainant

Complainant asserts that:

(a)                Complainant is a limited liability corporation with an address in the State of Nevada, U.S.A.

(b)               Complainant is the proprietor of the domain name <blackhatworld.com> (the “Complainant’s Domain”), which Complainant registered on April 15, 2006.

(c)                “Complainant has acquired common trademark and service mark rights in  Black Hat World by virtue of registering “BlackHatWorld.com” and utilizing such domain in connection goods and services.”

(d)               Since registering Complainant’s Domain in 2006, “Complainant has used the mark, ‘Black Hat World’, internationally in connection with a number of internet related products, services, and licenses, including, without limitation,  advertising, marketing, digital hosting, online forums for transmission of messages between computer users, and search engine optimization.”

(e)                “Complainant’s “BlackHatWorld.com” website alone has over 90,000 registered members.

(f)                 “Complainant’s place of business also shows the mark with a clearly lettered sign and Complainant has spent a significant amount of money in advertising to promote its mark, website and services.”

(g)                On April 29, 2010, Complainant filed an application with the United States patent and Trademark Office seeking to register the trademark BLACK HAT WORLD, which is currently pending.

(h)                The products and services listed in Complainant’s trademark application are:

(i)  Advertising and commercial information services, via the internet; Advertising and marketing; Consulting services in the field of internet marketing; Providing business marketing information; Providing information in the field of marketing and on-line marketing media via the Internet; The bringing together, for the benefit of others, of a variety of goods and services, enabling customers to conveniently view and purchase those goods and services from an Internet web site particularly specializing in the marketing of the sale of goods and services of others.

(ii)  Providing on-line forums for transmission of messages among computer users; Providing on-line forums for transmission of messages among computer users concerning internet marketing.

(iii)  Consultation services in the field of search engine optimization; Hosting of digital content on the Internet; Providing a web site featuring technology that enables internet users to share documents, images and videos.

(i)                  Respondent registered the domain name <blackhatworld.org> (the “Respondent’s Domain”) on April 10, 2008.  This was almost two years after Complainant’s Domain was registered. 

(j)                 Respondent’s Domain is confusingly similar or identical to Complainant’s Domain.

(k)               Respondent does not have any rights or legitimate interest in Respondent’s Domain or the mark BLACK HAT WORLD. 

(l)                  Respondent does not own any trademark or service marks encompassing Respondent’s Domain. 

(m)              Respondent is not making legitimate fair use of Respondent’s Domain and is not engaged in any use of Respondent’s Domain in connection with a bona fide offering of goods and services.

(n)                The purpose of Respondent’s Domain is to misleadingly divert consumers looking for Complainant’s goods and services to Respondent’s Domain. 

(o)               Another purpose of Respondent’s Domain is to disparage and tarnish Complainant. 

(p)               Respondent’s Domain also provides links to competitors of Complainant and Respondent is thereby engaging in unlawful diversion of Complainant’s consumers for commercial gain.

(q)               Respondent has registered Respondent’s Domain in bad faith. 

(r)                 The registration of Respondent’s Domain occurred almost two years after Complainant’s Domain and by that time Complainant had acquired valuable rights in and to Complainant’s Domain and the mark BLACK HAT WORLD. 

(s)                Respondent registered Respondent’s Domain primarily for the purpose of disrupting the business of Complainant.

Although Complainant asserts use of Complainant’s Domain/trademark in general manner, those assertions are completely lacking in specificity. Furthermore, the  Complaint provides zero direct evidence demonstrating any actual use of the domain name/trademark in association with any products or services.

B.                 Respondent

Respondent asserts that:

(a)                Complainant has no rights to Respondent’s Domain since Complainant’s trade‑mark application for BLACK HAT WORLD has not been registered with the USPTO.

(b)               Complainant’s Domain is not used in connection with any goods or actual services. 

(c)                Complainant’s Domain is used for hacking, deceiving and providing false information to internet users as well as a number of other illegal activities.

(d)               Respondent’s Domain is a website providing free information to help other users stay away from illegal hacking websites such as the website at Complainant’s Domain. 

(e)                Respondent’s Domain is not associated with any illegal activities nor diversion of customers.

(f)                 The purpose of Complainant making the Complaint is to try to acquire Respondent’s Domain so that Complainant can redirect Respondent’s Domain to Complainant’s Domain.

FINDINGS

The Panel finds that Complainant has not proven the first element stipulated in Paragraph 4(a) of the Policy and consequently Respondent’s Domain should not be transferred from Respondent to Complainant.

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 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;

(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.

Identical and/or Confusingly Similar

Paragraph 4(a) of the Policy requires Complainant to establish that:

(1)               Complainant has rights in a trademark or service mark; and

(2)               Respondent’s Domain is identical or confusingly similar to that trademark or service mark.

Complainant bears the onus of proving that Complainant’s Domain is a trademark or service mark in which Complainant has rights. Complainant has provided evidence that it applied to register Complainant’s Domain as a trademark. However, that does not establish any enforceable trademark rights in Complainant’s Domain.

Complainant also asserts that it has common law trademark rights in Complainant’s Domain.  Complainant bears the onus of proving the existence of such rights pursuant to  Paragraph 4(a)(i) of the Policy.

Complainant must also identify the jurisdiction in which it is claiming common law rights and elucidate the relevant legal principles of that jurisdiction with a view to justifying its allegations of acquired common law rights. This is important because not every country recognizes common law rights, and the relevant law of each jurisdiction has its own nuances.

Given the facts that have been asserted by the Complainant, the Panel will assume that Complainant intends to rely on common law trademark rights arising under federal or state laws prevailing in the State of Nevada.  The Panel consists of a Canadian lawyer, so the Panel must look to United States authority to ascertain the applicable legal principles and to other UDRP cases to see how those legal principles have been applied in UDRP proceedings.

McCarthy on Trademarks and Unfair Competition, 4^th ed. (Thomson West: 1992, last updated March 2007) (“McCarthy”) is generally considered to be a leading treatise on trademark law in the United States.  At page 16‑4, McCarthy explains the basis on which common law trademark rights arise under the laws of the United States:

To create trademark or trade dress rights, a designation must be proven to perform the job of identification: to identify one source and distinguish it from other sources.  If it does not do this, then it is not protectable as a trademark, service mark, trade dress or any similar exclusive right.  With each sale of goods or services under such a business symbol, the seller builds up greater and greater legal rights in that symbol.  In the absence of customer recognition of the symbol, the “owner” of the business has no good will, and thus there is nothing for the “trademark” or “trade dress” to symbolize or represent.  [emphasis added; citations omitted].

Hence, under U.S. legal principles, common law rights are created by active use of a trademark in association with particular goods and services.  The sale and advertising of such goods and services generates goodwill and reputation among customers and potential customers. The strength, or distinctiveness, of a common law trademark is a function of the goodwill and reputation generated by those activities.

When a complainant asserts a UDRP claim based on a common law trademark, it must demonstrate that the trademark is, in fact, associated by the relevant public with the complainant’s goods or services.  It must prove that at least some goodwill and reputation has been generated in connection with the mark as a consequence of active use in commerce.  In other words, Complainant must provide credible evidence establishing that the common law trademark on which it relies has acquired distinctiveness.  See Kip Cashmore v. URLPro, D2004‑1023 (WIPO Mar. 14, 2005) which made a finding that no common law rights were proven where the complainant did not present any credible evidence establishing acquired distinctiveness.  Relevant evidence includes the length and amount of sales under the mark, the nature and extent of any advertising, consumer surveys, media recognition or customer awareness.

In this case, Complainant has utterly failed to demonstrate the existence of any common law trademark rights in Complainant’s Domain. The Complaint contains nothing more than unsupported assertions that Complainant has used BLACK HAT WORLD as a trademark at any time, and those assertions are rudimentary in the extreme. The assertions are completely lacking in specificity.

Complainant’s principal submissions in support of its claim to common law trademark rights in BLACK HAT WORLD are:

Complainant has acquired common trademark and service mark rights in  Black Hat World by virtue of registering “BlackHatWorld.com” and utilizing such domain in connection goods and services.

Complainant has common law rights in and to the trademark and service mark of ‘Black Hat World’ by virtue of its use in commerce. Since 2006, Complainant has used the mark, ‘Black Hat World’, internationally in connection with a number of internet related products, services, and licenses, including, without limitation,  advertising, marketing, digital hosting, online forums for transmission of messages between computer users, and search engine optimization. Further, Complainant’s “BlackHatWorld.com” website alone has over 90,000 registered members. Complainant’s place of business also shows the mark with a clearly lettered sign and Complainant has spent a significant amount of money in advertising to promote its mark, website and services.

Those statements represent the entirety of Complainant’s factual submissions and evidence on the subject of its alleged common law rights.  The balance of the Complaint  and its Exhibits do not add anything to those bare, vague assertions.

The Panel finds that Complainant has not provided any evidence from which it can be inferred  that there is any customer recognition of Complainant’s Domain as a trademark or that Complainant’s Domain serves to distinguish Complainant’s products and services from those offered by others. 

Accordingly, the Panel finds that Complainant has not satisfied its burden under paragraph 4(a)(i) of the Policy. 

Rights or Legitimate Interests and Bad Faith

The Panel declines to analyze the remaining two elements of the Policy.  Having found against Complainant on the first element, it is not necessary to consider the two remaining elements. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) which held that the complainant’s failure to prove one of the elements makes further inquiry into the remaining two elements of the Policy unnecessary.

DECISION

The Panel concludes that relief shall be DENIED.  Accordingly, it is Ordered that the <blackhatworld.org> domain name NOT be TRANSFERRED from Respondent to Complainant.

 

Robert A. Fashler, Panellist
Dated: July 8, 2010

 

 

 

 

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