MaxID Corp. v. Sam Koulusi / Sam
Claim Number: FA1112001421132
Complainant is MaxID Corp. (“Complainant”), represented by Clifford D. Hyra, Virginia, USA. Respondent is Sam Koulusi / Sam (“Respondent”), represented by Stacey R. Halpern, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maxid.com>, registered with The Registry at Info Avenue d/b/a IA Registry.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
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Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2011; the National Arbitration Forum received payment on December 21, 2011.
On January 10, 2012, The Registry at Info Avenue d/b/a IA Registry confirmed by e-mail to the National Arbitration Forum that the <maxid.com> domain name is registered with The Registry at Info Avenue d/b/a IA Registry and that Respondent is the current registrant of the name. The Registry at Info Avenue d/b/a IA Registry has verified that Respondent is bound by The Registry at Info Avenue d/b/a IA Registry 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 January 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2012 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@maxid.com. Also on January 13, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 2, 2012.
Complainant submitted an Additional Submission, which was considered timely.
Respondent also submitted an Additional Submission, which was considered timely.
On February 07, 2012, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., as Panelist.
Complainant requests that the domain name <maxid.com> be transferred from Respondent to Complainant.
A. Complainant alleges as follows:
This Complaint is based upon the service marks “MAXID”, U.S. Ser. No. 85/407,457, and “MAXID”, U.S. Ser. No. 85/407,439 (See Annex 2).
The service mark “MAXID” has been used since at least 2003 worldwide and
since June 2007, in the United States in connection with the development of new technology for others in the fields of automatic electronic identification verification systems and biometrics; technology consultation and research in the fields of automatic electronic identification verification systems and biometrics in connection with portable and hand-held computers; portable and hand-held computers for identity determination, for verification and validation, and for access management and perimeter control of buildings and surrounding areas; scanners and portable scanners; and computer software for operating the aforementioned goods.
The registrations were applied for on August 25, 2011. Earlier applications
were filed by the Complainant’s predecessor-in-interest in the United States on February 25, 2004 (U.S. Ser. No.78/373,571, no conflicting marks found) and on April 19, 2004 (U.S. Ser. No. 78/404,290, allowed on December 27, 2005.) These applications were subsequently abandoned.
Complainant alleges that the domain name <maxid.com> is identical to a trademark or service mark, “MAXID” in which the Complainant has rights.
The top level word of the domain does not affect the domain name for the purpose of determining whether it is identical or confusingly similar, according to Complainant.
The mark’s distinctiveness is established by the Complainant’s long, exclusive
worldwide use and advertising of the mark, (See Annexes 5-8). Therefore,
Complainant has rights to the MAXID mark relied upon.
Complainant alleges that Respondent has no rights or legitimate interests in
respect of the disputed domain name, as Respondent’s use of the domain name
is not in connection with any bona fide offering of goods or services. The domain
name is being passively held and does not resolve to a website (Annex 3.)
Respondent appears to be holding the domain name as a high value asset,
due to its association with Complainant.
Respondent is not known by the domain name, either as an individual or as a
business. Respondent is not making a legitimate non-commercial use of the
domain name.
Complainant alleges that the domain name was registered and is being used in
bad faith pursuant to ICANN Policy ¶4 (a)(iii). Respondent acquired and is
holding the domain name primarily for the purpose of diverting customers of the
Complainant for financial gain.
The transfer of a domain name to a third party amounts to a new registration. It is
the Respondent’s intent that matters, not the intent of some prior registrant.
Although the <maxid.com> domain name was first registered in 2001, historical
Whois information reveals that as of December 11, 2002, it was held by Hong
Kong Domainer Domain Deluxe. The domain was transferred to the Respondent
on March 03, 2005, per Annex 4.
Complainant’s marks, while not registered at the time the domain at issue was
transferred to the Respondent (March 03, 2005) were in widespread, worldwide
commercial use by the Complainant for over 7 years. Complainant has
subsidiaries bearing the MAXID name and is using the MAXID mark in the UK,
South Africa, and Taiwan.
MAXID is not a commonly used word and has no meaning aside from trademark use. It can therefore, be assumed that the domain name was registered in bad faith to take advantage of the domain names’ association with the Complainant.
Respondent, in order to establish good faith domain name registration, had an obligation to perform some kind of a trademark search.
Respondent is passively holding the domain name, without resolving to a website. It has been routinely held that passive holding of domain names that are confusingly similar to well- known trademarks, constitutes bad faith use.
Respondent registered and is holding a domain name identical to Complainant’s trademark; has no connection to Complainant; is not authorized to use the trademark; and has no legitimate purpose to use the mark. In such circumstances, bad faith use is clearly established by passive holding.
B. Respondent alleges as follows:
The
domain name <maxid.com> was originally created on August 05,
2001. On June 10, 2004, the domain name was acquired by Respondent. Thus,
Respondent’s rights date back to the August 05, 2001 creation date, which is
years before Complainant even attempts to claim any rights in the MAXID mark.
Moreover, even if the June 10, 2004 acquisition date is used instead of the
creation date, Respondent’s rights are still prior and superior to the
Complainant’s alleged rights in the MAXID mark.
Complainant admits that it does not own any trademark or service mark registrations for the MAXID mark. Therefore, its claim that it has common law trademark rights, is unsubstantiated. Complainant’s “evidence” is three Internet
articles which discuss two other companies alleged use of MAXID as a trade name; a website screenshot alleging a relationship between Complainant and two other companies; and two abandoned U.S. trademark applications.
Complainant claims that these two other companies’ rights somehow inure to the benefit of Complainant. Complainant’s explanation is in its Annexes, which purportedly explains the relationship between Complainant and Sygade. But the Annexes do not provide any evidence of Complainant’s alleged first use of the MAXID name or mark, or Complainant’s relationship with MAXID Ltd. The Annexes merely support use by Complainant of the mark MAXID as a trade name since 2007, years after Respondent acquired the domain name <maxid.com>.
Complainant states that its Complaint is based on trademark applications filed
on August 25, 2011 and claims first use anywhere, since June, 2007. The applications were filed over seven years after Respondent acquired the <maxid.com> domain name and allege a date of first use over three years after Respondent acquired the domain name. Thus, Respondent’s registration of the <maxid.com> domain name predates Complainant’s 2007 alleged date of first use anywhere, by over three years.
Complainant supplies no support for its statement in its Complaint that the service mark MAXID has been used since 2003 worldwide and since 2007 in the United States.
C. Additional Submissions
Complainant alleges as follows:
Complainant, in its Additional Submission, asserts that it has rights in the MAXID trademark by virtue of its 100% ownership of Sygade Solutions (Pty) Ltd. and MaxID Ltd., as well as long and notorious common law use.
These additional submissions and annexes show that MaxID Corp. purchased 100% of the MaxID Ltd. and SyGade Solutions (Pty) Ltd. companies, therefore transferring the goodwill and trademark rights of those companies to MaxID Corp. This evidence includes a declaration by a MaxID employee who was with the Company at the time of the transaction (Annex 4); an internet archive record of the Complainant’s website history page on May 08, 2010 (Annex 9); and an announcement related to the transaction, dated July 13, 2007 (Annexes 10 and 11) and located in an internet archive record of the maxidgroup.com website
on August 28, 2008.
Annex 40 shows that the MAXID mark was already in use in connection with a wide variety of products and services on December 2003. Internet archive records of the maxidcorp.com website from July 05, 2004 show the MAXID trademark in use on a wide variety of products and services. Annexes 20-31 show continued use of the MAXID mark in connection with numerous products from that time, to the present. Therefore, Complainant alleges that it is clear that it has trademark rights in the MAXID mark.
Complainant alleges that Respondent has no rights or legitimate interests in the <maxid.com> domain name as demonstrated by Respondent’s inability to produce any evidence of preparations to use the domain name in connection with a bona fide offering of goods or services.
Respondent is not known by the domain name and is not making a legitimate noncommercial or fair use of the domain name.
Complainant alleges that Respondent registered and is using the <maxid.com> domain name in bad faith, because both Respondent’s passive holdings and Respondent’s alleged intended use of the domain name, constitutes bad faith usage.
Respondent lastly alleges that Respondent failed to conduct a trademark search as required, which would have revealed Complainant’s pre-existing rights.
Respondent alleges as follows:
Respondent alleges that Complainant’s additional Annexes attached to its Additional Submission failed to prove that it has prior rights in the MAXID trademark.
Complainant cannot rely upon SyGades’ abandoned ITU application date to establish that it had rights in the MAXID mark prior to Respondent’s registration of the domain name. ITU applications confer no rights on the applicant, unless and until the marks register. The existence of these now abandoned ITU applications did not require Respondent to conduct a trademark search prior to acquiring the domain name.
Complainant cannot show that it has acquired trademark rights through its use of the MAXID mark in US commerce, because the only thing that the record shows is that Complainant first made use of the MAXID mark in commerce in August 2011, years after registration of the <maxid.com> domain name by Respondent.
While the USPTO may have accepted these Annexes as “specimen’s of use” of the mark in commerce by Complainant, the law is clear that specimens of use submitted with a trademark application must show current use of the mark as of the filing date of the application. See 37 C.F.R. Sec. 2.34
Moreover, while Complainant continues to claim long and notorious common law use, Complainant has failed to submit any evidence, such as invoices, packages, labels, contracts or declarations from customers, supporting such use.
Respondent did not register the domain name in bad faith. As Respondent’s rights in the <maxid.com> domain name predate Complainants alleged rights, it is not possible for Respondent to register a domain name in bad faith.
Complainant’s own evidence supports the fact that Respondent’s registration of the <maxid.com> domain name has not interfered with or diverted Complainant’s customers from finding Complainant’s multiple websites.
It is well established that a domain name registrant has no obligation to conduct a trademark search prior to acquiring the domain name. Respondent had no constructive notice due to Sygades’ now abandoned ITU applications.
Passive holding of a domain name is not tantamount to bad faith, particularly, where as here; the mark involved was not an extremely famous mark, the Respondent did not fail to respond to the Complaint, and false name and address information was not listed in the WHOIS information.
Annexes fail to demonstrate that Complainant acquired any rights from Sygade and MaxID Ltd.
(1) The domain name <maxid.com> registered by Respondent is not identical or confusingly similar to a trademark or service mark in which Complainant has rights, per Policy ¶(4)(a)(i); and
(2) as Complainant has not satisfied Policy ¶4(a)(i) because it has failed to establish rights in the mark, the Panel declines to analyze whether Respondent has rights or legitimate interests in respect of the domain name <maxid.com> per Policy ¶(4)(a)(ii); and
(3) similarly, as Complainant has not satisfied Policy ¶4(a)(i) because it has failed to establish rights in the mark, the Panel declines to analyze whether the domain name <maxid.com> has been registered and used in bad faith, per Policy ¶4(a)(iii).
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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 states in its Amended Complaint that the service mark MAXID has been used since at least 2003 worldwide and since June, 2007 in the United States in connection with the development of new technology. Respondent argues that Complainant has failed to establish its rights in the MAXID mark and
that Complainant’s evidence in this regard is insufficient. Respondent cites such insufficient evidence as three “internet articles” discussing two other companies alleged use of the MAXID trade name, a screen shot alleging a relationship between Complainant and those two companies, and two abandoned U.S. trademark applications that were filed in another company’s name.
However, Panel notes that the abovecited “insufficient” evidence has been supplemented in Complainant’s Additional Submission, with more precise, yet still unconvincing evidence. This evidence consists of, such as: a Declaration by a MaxID Corp. employee; and multiple Annexes, such as printouts of internet archive records from 2004 through 2012.
Complainant, in its Additional Submission, explains that MaxID Corp.’s rights derive from its 2007 purchase of 100% ownership of SyGade Solutions (Pty) Ltd. and MaxID Ltd. This explanation is consistent with Complainant’s 2011 trademark/service mark applications, which cites use of the MaxID mark, since June of 2007.
The problematic period, then, is the years between 2003, when Complainant cites that it first began business operations, and 2007, when its federal applications cite that it first began using the MAXID mark. Complainant explains this interim period by seeking to piggyback upon its predecessor-in-interests’ intellectual property rights. Yet, Complainant has not offered Panel any actual evidence of inurement of rights, such as an assignment or contract or even a bill of sale. Further, Panel is not persuaded by Complainant’s proffered evidence that “common law” (as opposed to registered) trademark rights were acquired by anyone during this time period.
Policy ¶ 4(a)(i) does not require a trademark to be “registered” to establish rights in the mark, if “common law” rights have been established. See 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 CUINEMA 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).
Unregistered trademarks must acquire secondary meaning in order to achieve common law trademark status. In assessing a claim of secondary meaning, the major inquiry is the consumer’s mental impression of the mark. The mark must denote to the consumer “a single thing coming from a single source,” Coca Cola Co. v. Koke Co., 254 U.S. 143, 146, 41 S. Ct., 113, 114, 65 L. Ed. 189 (1920) to support a finding of secondary meaning. Both direct and circumstantial evidence may be relevant. See also, Zatarian’s Inc., v. Oak Grove Smokehouse, Inc., 698 F. 2d 786 (5th Cir. 1983).
Factors such as amount and manner of advertising, volume of sales, and length and manner of use, may serve as circumstantial evidence relevant to the issue of secondary meaning. See, e.g., Vision Center, 596 F. 2d at 119 and Aloe Crème Laboratories, 423 F. 2d at 849-50.
Here, Complainant misses the mark in its Additional Submission by merely reciting inclusions of further evidence, such as, a Declaration by a MaxID Corp. employee; various internet archive records; and an announcement related to its
2007 corporate purchase transaction. However, Complainant did not analyze how this additional evidence caused its customers to have a distinct impression regarding the source and quality of Complainant’s goods and services.
Complainant’s employee, Steve Bowen, states in his Declaration ¶ 9, “In recent years sales of MaxID branded goods and services have averaged over $10 million per year.” The phrase “in recent years” obfuscates the exact years that sales have averaged over $10 million per year, and thus contributes no credible
evidence from which to imply an acquired secondary meaning, particularly as to that period prior to Respondent’s registration of domain name, in either 2004 or 2005. Nor does the remainder of the Declaration include any information as to Complainant’s annual volume of sales, its advertising budget, nor as to its manner of advertising, other than its website, nor results of any consumer surveys, from which to deduce a secondary meaning.
Panel also notes that Complainant’s Annexes largely portray MAXID as a trade name, rather than as trademarks or service marks, which are properly used as adjectives to describe a product or service, such as, “Ford” trucks, not just “Ford Motor Company.” For example, Complainant’s Annex 15, which is a web archive of <maxidcorp.com>, portrays MAXID merely as a trade name, as in “Contact MaxID for details…” and “Max ID and its developmental partner…”
Annex 20, which is a web archive of 2005, is particularly enlightening regarding Complainant’s internal branding policies, wherein it states in its “Welcome to MaxID” message that, “We work primarily with Value Added Resellers and
System Integrators to deliver a professional service that ranges from initial
testing through to complete RFID solutions.” Thus, Complainant, at least in 2005, primarily sold unbranded merchandise to Resellers, who branded it with their own trademarks. Presumably then, there was a lessened need for Complainant to protect its own trademarks and/or service marks through a formal registration process.
Panel was influenced by arguments and analysis contained in Respondent’s Additional Submission, in several respects. For example, Complainant cannot
rely upon Sygade’s abandoned ITU application date to establish that it had rights in the MAXID mark prior to Respondent’s registration of the domain name or that the existence of these now abandoned ITU applications required Respondent to conduct a search prior to acquiring the domain name.
Respondent exhaustively analyzes Complainant’s Annexes to arrive at the credible conclusion that Complainant has failed to prove that it has obtained common law rights through its own usage of the mark MAXID. For example, Annexes 14-19 and 20-27 appear to discuss alleged use of the MAXID mark by Sygade, not by the Complainant. And Annexes do not provide definitive evidence, such as certificates of merger, shareholder approvals, assignments or bills of sale, to prove a transfer of intellectual property rights, and specifically, the MAXID mark.
Therefore, Panel finds that Complainant has not presented sufficient evidence, to prove that its MAXID marks have acquired such a level of distinctiveness in the minds of its customers, so as to christen these marks with the status of common law trademark rights, as are protected under Policy ¶4(a)(i). See 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); see also Occidental Hoteles Mgmt., S.A. & Coroctal 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)).
The Panel concludes that Complainant has not satisfied Policy ¶4(a)(i) because it has failed to establish rights in the mark MAXID, and thus, 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 Panel concludes that Plaintiff has not satisfied Policy ¶4(a)(i) because it has failed to establish rights in the mark, and thus, the Panel declines to analyze ¶4(a)(ii) of the Policy.
The Panel concludes that Plaintiff has not satisfied Policy¶4(a)(i) because it has failed to establish rights in the mark, and thus, the Panel declines to analyze ¶4(a)(iii) of the Policy.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <maxid.com> domain name REMAIN WITH Respondent.
Carol Stoner, Esq., Panelist
Dated: February 24, 2012
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