Ostap Myskiv v. Peter Worhol
Claim Number: FA1008001343260
PARTIES
Complainant is Ostap Myskiv (“Complainant”), Cyprus. Respondent is Peter Worhol (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <keysrecover.com>, registered with Name.Com LLC.
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.
Darryl C. Wilson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2010.
On August 27, 2010, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <keysrecover.com> domain name is registered with Name.com LLC and that the Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@keysrecover.com. Also on September 1, 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 September 17, 2010.
On October 6, 2010 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that he first used the trademark RECOVERY KEYS in commerce with the goods and services sold under its domain <recover-keys.com> in October 2007. The Complainant further states that “Respondent product and service offered via its domain <keysrecover.com> are identical in nature….Thus, the use by Respondent of a confusingly similar trademark identifying Complainant’s goods creates a strong likelihood of confusion in the marketplace….” The Complainant also asserts that the (U.S.) Federal Circuit 13-factor test to determine confusing similarity weighs in Complainant’s favor.
B. Respondent
The Respondent contends that the Complainant’s trademark is “using generic (dictionary) words and therefore cannot be claimed under trademarks.” Respondent also points out that there are multiple domain owners that use the words “key” and “recover” in their domain names and numerous domains that describe their purposes using the same words as well. Respondent states that no secondary meaning has been shown by Complainant and instead the mark is a common term associated with a particular category of goods or services to which it relates. Respondent also contends that Complainant did not provide any notice of trademark rights at his site. Respondent claims that he was unaware of Complainant’s existence until 2010 and not in 2008 as Complainant asserts.
FINDINGS
Complainant, Mr. Ostap Myskiv of Limassol, Cyprus sells a business product under the trademark RECOVERY KEYS. The product is described as a “simple yet comprehensive Windows application designed to safeguard activation keys for software products installed on a user’s local or remote network computers in the event of a system or hard disk crash.” Complainant further indicates “Recover-Keys allows customers to recover and backup product keys….” Complainant has apparently been engaged in marketing this product since 2007 via its website at <recover-keys.com> and recently (June 2010) filed for U.S. Federal Trademark protection; however, no registration has issued. Complainant alludes to the presence of secondary meaning associated with the mark. Complainant also uses extensive U.S. trademark judicial precedent in support of his assertions and, in doing so, intersperses jurisprudence from the U.S. Federal Anti-Cybersquatting Protection Act.
Respondent Peter Worhol of Moskow, Russia claims that his “domain was in business long before June 17, 2010” when Complainant filed his U.S. federal trademark application. Respondent does not indicate when his business started but states that his site “is used for distributing computer programs that are recovering keys for different software installed.” Respondent claims to have had no prior communication or notification of Complainant before the summer of 2010 and that his business does not replicate that of the Complainant. Respondent gives little information about his business instead using the bulk of his limited response to provide practical (as opposed to legal) references to support the claim that Complainant’s mark is unprotectable. Respondent does make some scant references to past UDRP decisions and does not review U.S. trademark law in direct response to the Complainant’s allegations.
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.
Complainant has filed a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the RECOVER-KEYS mark, but Complainant does not yet hold a trademark registration. However, federal trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Prior panels have found that a governmental registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See 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 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).
Complainant appears to base its claim that it has established common law rights to the RECOVER-KEYS mark on the assertion that the mark has acquired secondary meaning. As such the Complainant recognizes that the mark is not inherently distinctive and that the primary significance of the mark in the minds of the public is the common meaning of the terms but for the existence of secondary meaning. The secondary meaning appears to be based solely on Complainant’s archival data establishing its website in October 2007. In addition to the length of time a common law mark has been in existence, other relevant evidence normally supporting such a claim includes the amount of sales under the mark, the nature and extent of advertising, the level of media recognition, and survey data on consumer awareness. None of that relevant evidence has been provided by the Complainant and the time of use alone is insufficient to indicate that secondary meaning is associated with the mark. 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 Policy ¶ 4(a)(i)); see also 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.”).
Complainant further argues that Respondent’s <keysrecover.com> domain name is confusingly similar to its RECOVER-KEYS mark because Respondent merely reverses the words in Complainant’s mark in the disputed domain name. Complainant also claims that omitting the hyphen from its mark and attaching the generic top-level domain (“gTLD”) “.com” to its mark does not negate a finding of confusingly similar. The Panel notes that Respondent’s alterations do not sufficiently distinguish its domain name from Complainant’s mark. See Reed Elsevier Props. Inc. v. Weekly Publishers, FA 151536 (Nat. Arb. Forum May 5, 2003) (“Inverting or transposing words in a trademark is not sufficient to avoid confusing similarity because the two words create the same commercial impression and meaning.”); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). While Respondent’s <keysrecover.com> domain name is similar to Complainant’s RECOVER-KEYS mark the inquiry does not end there. However, the inquiry does not extend to implementation of the U.S. Federal Circuit courts use of their 13 factor test for confusing similarity. While those decisions are helpful the UDRP arbitrations are international administrative proceedings that are not bound by the court decisions of any particular jurisdiction. Past UDRP rulings, while not binding precedent, generally offer much instructive guidance in questions of UDRP policy interpretation as the matters in dispute are more similar than those that make up the bulk of U.S. federal jurisprudence on confusing similarity.
Respondent argues that Complainant’s mark is unprotectable as is his own domain name because both incorporate the common words “recover” and “key(s)” and that he “believes according to practice those generic words cannot be trademarked.” Respondent supports his belief by looking at various other sites using the words both separately and in unison. The Respondent’s effort to genericize Complainant’s mark by separating it into constituent parts is improper. A mark must be analyzed as used and cannot be made indistinctive by breaking it down into components that do not constitute the actual mark. See 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.”).
Furthermore, some marks do include generic words that are specifically disclaimed as protectable while others contain generic terms but are allowed as marks due to strong proof of secondary meaning. However, even a protected trademark cannot be used to prevent others from using the terms incorporated in the mark in their normal descriptive sense nor can such a mark appropriate terms that were commonly used by the public prior to the claimed use as a mark. Even if Complainant’s mark is not generic as Respondent contends, it still suffers from the unprotectability of de facto secondary meaning due to Complainant’s selection of common terminology as the name of its goods. Complainant states that its RECOVERY KEYS mark identifies its product that allows users to recover keys. Respondent is also engaged in the business of providing software for key recovery via his <keysrecovery.com> website and indicates the existence of domain names and websites of others using the same terms that are engaged in the same or similar key recovery activity. Clearly, someone needs to unlock the secret of distinctive labeling in the parties field of endeavor.
Respondent has provided sufficient evidence that undermines Complainant’s assertion of common law rights in the RECOVER-KEYS mark. See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines 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 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)).
The Complainant has failed to prove this element.
This element has not been analyzed as Complainant failed to prove the first element.
This element has not been analyzed as Complainant failed to prove the first element.
DECISION
Since the Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that the relief requested shall be DENIED.
Prof. Darryl C.
Wilson, Esq., Panelist
Dated: October 20, 2010
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