U Touch Limited v. Touch Screens Inc.
Claim Number: FA1106001392947
Complainant is U Touch Limited (“Complainant”), represented by Mark Ogram, Arizona, USA. Respondent is Touch Screens Inc. (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <u-touch.com>, registered with GoDaddy.com, Inc.
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 Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2011; the National Arbitration Forum received payment on June 13, 2011.
On June 10, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <u-touch.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2011 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@u-touch.com. Also on June 16, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <u-touch.com> domain name is identical to Complainant’s U-TOUCH mark.
2. Respondent does not have any rights or legitimate interests in the <u-touch.com> domain name.
3. Respondent registered and used the <u-touch.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, U Touch Limited, owns the U-TOUCH mark which it uses in connection with Computer Screen Overlay Filters (“CSOF”). Complainant began using the U-TOUCH mark on February 28, 2003. Additionally, Complainant registered its mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,776,600 filed July 15, 2009, issued April 20, 2010).
Respondent, Touch Screens Inc., registered the <u-touch.com> domain name on May 5, 2002. The disputed domain name resolves to a webpage which sells CSOFs identical to those which Complainant sells.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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; and
(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.
Complainant contends that it has rights in the U-TOUCH mark. Panels have found that the registration of a mark with a federal trademark authority grants a complainant rights in a mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Prior panels have also found that the relevant date of a complainant’s rights in a mark is the date the trademark application was filed with the USPTO. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). Complainant has provided the Panel with evidence of its registration of the U-TOUCH mark with the USPTO (Reg. No. 3,776,600 filed July 15, 2009, issued April 20, 2010). The Panel finds that Complainant has established rights in the U-TOUCH mark under Policy ¶ 4(a)(i), dating back to the filing date of July 15, 2009.
Complainant also asserts that it has established common law rights in the U-TOUCH mark dating back to February 28, 2003. However, Complainant has failed to offer evidence of secondary meaning associated with the mark so as to establish common law rights. See Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning); 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).
Respondent’s domain name has been accused of being identical to Complainant’s mark. Panels have found that the addition of a generic top-level domain (“gTLD”) to a fully-incorporated mark does not distinguish the domain name from the mark so as to negate a finding that they are identical. See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark). Respondent’s <u-touch.com> domain name is nothing more than Complainant’s mark followed by the gTLD “.com.” The Panel finds that the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i)
The Panel finds Policy ¶ 4(a)(i) to be satisfied.
Once a complainant has established a prima facie case in support of its allegations against a respondent, the burden shifts to the respondent to refute these claims. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). The Panel finds that Complainant has made a prima facie case in support of its contentions that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name because of Respondent’s failure to submit a response to the Complaint. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel will, however, review the record to determine if there is information to suggest that Respondent does have rights or legitimate interests.
If Respondent can demonstrate that it is commonly known by the disputed domain name, the Panel may find that it has rights or legitimate interests in the domain name. The Panel is to use the information available from the record, including the WHOIS information for the disputed domain name, to determine if Respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Complainant has not authorized Respondent to use the U-TOUCH mark in any capacity. Additionally, the WHOIS information for the disputed domain name provides the Panel with no evidence that Respondent is commonly known by it. The Panel thus finds that, pursuant to Policy ¶ 4(c)(i), Respondent is not commonly known by the <u-touch.com> domain name.
The disputed domain name resolves to a website which sells CSOFs. Complainant sells identical CSOFs. Panels have found in the past that a respondent’s use of a confusingly similar domain name to divert Internet users from a complainant’s website and instead sell the same products on its own website was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel finds that Respondent’s use of the disputed domain name to sell products identical to those which Complainant provides, thus diverting Internet traffic is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Complainant has satisfied the required elements of Policy ¶ 4(a)(ii).
Respondent registered the disputed domain name on May 4, 2002. The Panel, having found the Complainant’s rights in the U-TURN mark dates back, at the earliest, to its initial use of the mark on February 28, 2003, finds that the Respondent could not have registered the disputed domain name in bad faith. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
Having failed to established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <u-touch.com> domain name REMAIN WITH Respondent.
John J. Upchurch, Panelist
Dated: July 25, 2011
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