Raza Communications v. Rodrigo Teijeiro
Claim Number: FA0212000135603
PARTIES
Complainant
is Raza Communications, Chicago, IL,
USA (“Complainant”) represented by Patrick
W. Fletcher, of
Fletcher Law Offices. Respondent is Rodrigo Teijeiro, San Isidro,
ARGENTINA (“Respondent”) represented by Federico
Busso.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <razacommunications.com> and <razacom.com>, registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge he has no known conflict in serving as Panelist in
this proceeding.
Bruce
E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 2, 2002; the Forum received a hard copy of the
Complaint on December 11, 2002.
On
December 4, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <razacommunications.com>
and <razacom.com> are registered with Go Daddy Software, Inc.
and that the Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, 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
December 12, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 2, 2003 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 postmaster@razacommunications.com and
postmaster@razacom.com by e-mail.
A
timely Response was received and determined to be complete on December 31, 2002.
On January 7, 2003 pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Bruce E.
Meyerson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names <razacommunications.com>
and <razacom.com> be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
states that it currently has a pending trademark application (serial number
78/158568) filed with the United States Patent and Trademark Office for the
trademark RAZA COMMUNICATIONS.
Complainant asserts common law interests in the RAZA COMMUNICATIONS mark
as it has used the mark since October 14, 1998 in connection with its
telecommunications reseller services.
Complainant contends that since 1988 it has spent $250,000 annually to
promote and advertise its services under the RAZA COMMUNICATIONS mark. Complainant claims to have used its mark on
radio, television, and the Internet in an effort to raise awareness of its
telecommunication services. According
to Complainant, Respondent should be considered as
having no rights or legitimate interests in the domain names because
before any notice to Respondent of this dispute, Respondent did not make use
of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering of
goods or services.
B. Respondent
Respondent contends that
Complainant has failed to offer evidence in support of either trademark
ownership or marketing expenses, other than the conclusory statements in his
declaration. Respondent argues that
there is no offer of evidence to indicate use of the mark or that it is known
to the public or that Complainant enjoyed its use prior to that of the
Respondent. Respondent asserts that
Complainant has submitted evidence of its application for registration of a
trademark but filed the application after Respondent’s acquisition and use of
the domain names. Respondent contends
that there is no evidence that Complainant has complied with the statutory
period for opposition to the application, whether there were any oppositions
filed, or the outcome of any opposition.
Respondent asserts that the mere filing of an application is
insufficient to establish ownership of an issued trademark.
FINDINGS
Complainant currently has a pending trademark
application (serial number 78/158568) filed with the United States Patent and
Trademark Office for the trademark RAZA COMMUNICATIONS. Complainant has used its mark in commerce
since 1998 in connection with its telecommunications reseller services. Complainant’s application for registration
of its trademark was filed in August 2002,
after Respondent registered <razacommunications.com>
and several months before Respondent registered <razacom.com>.
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
notes that it currently has a pending trademark application (serial number
78/158568) filed with the United States Patent and Trademark Office for the
trademark RAZA COMMUNICATIONS.
Complainant asserts common law interests in the RAZA COMMUNICATIONS mark
as it has used the mark since October 14, 1998 in connection with its
telecommunications reseller services.
Since 1998, Complainant contends that it has spent $250,000 annually to
promote and advertise its services under the RAZA COMMUNICATIONS mark. Complainant claims to have used its mark on
radio, television, and on the Internet in an effort to raise awareness of its
telecommunication services.
Complainant
has not established, however, the requisite trademark or common law rights to
grant it the necessary “standing” to prevail in this matter. First, Complainant’s trademark application
does not in and of itself establish trademark rights in the mark for which it
applied. Thus, Respondent’s rights in
the disputed domain names “vested” before any registered trademark rights have
been established in Complainant’s favor.
Amsec Ent., L.C. v. McCall, D2001-0083 (WIPO Apr. 3,
2001) (pending trademark applications do not establish any enforceable rights
to the mark); Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of
the unanimous view that the trademark must predate the domain name”).
Second,
Complaint’s mere assertion of common law trademark rights is not
sufficient. A complainant seeking to assert
rights in an unregistered mark must provide evidence of use sufficient to
establish common law rights. R.
Badgley, Domain Name Disputes § 6.03 (2002).
To establish sufficient distinctiveness in a mark to demonstrate a
protectable common law right, a complainant must produce evidence of sufficient
distinctiveness that is “substantial.” Link Clicks v. Zuccarini, D2000-1547 (WIPO Jan. 12, 2001); County Bookshops v. Loveday, No. D2000-0655 (WIPO Sept. 22, 2000). The general allegations in the record submitted
by Complainant fail to demonstrate “substantial” evidence of distinctiveness to
warrant a finding of a protectible common law right.
Having
found that Complaint has failed to establish sufficient rights or interests in
a registered trademark or a common law trademark, no further consideration of
Respondent’s rights or use is necessary.
DECISION
Complainant’s request to have the domain
names <razacommunications.com> and <razacom.com> transferred to it is DENIED.
Bruce E. Meyerson, Panelist
Dated: January 21, 2003
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