Grandville Academic Team Boosters v. Floyd Houseman
Claim Number: FA1207001452744
Complainant is Grandville Academic Team Boosters (“Complainant”), represented by Joan L. Long of Barnes & Thornburg LLP, Illinois, USA. Respondent is Floyd Houseman (“Respondent”), represented by Nicholas D. Bowman, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <robodawgs.com>, registered with ENOM, INC.
The undersigned certifies that he 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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2012; the National Arbitration Forum received payment on July 11, 2012.
On July 10, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <robodawgs.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 July 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@robodawgs.com. Also on July 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 August 3, 2012.
Complainant submitted an Additional Submission on August 6, 2012 that was deemed to be in compliance with Forum rules.
On August 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
On August 20, 2012 the Panel issued a Procedural Order requesting further evidence from Respondent of its claimed preparations to use the name "Robodawg" or "robodawgs" prior to his purchase of the disputed domain name. Respondent filed Additional Submissions in response to said Order on August 31, 2012.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The <robodawgs.com> domain name was registered to Complainant for over a decade, but the registration was inadvertently allowed to expire.
Complainant submits that it has continuously and consistently used the mark
ROBODAWGS in connection with its engineering and robotics team competitions since 1998. The ROBODAWGS name is displayed on team members’ shirts and the team name, ROBODAWGS has appeared in news stories, social media and through interstate competitions.
Complainant submits that in addition to its common law rights accrued through 14 years of use, Complainant has filed for a federal registration in its mark, ROBODAWGS, U.S. Serial No. 85/672,787, with a claimed first use date of 1998, for use in connection with "educational services for K-12 students, namely an engineering team and competition services" in Class 41.
Complainant submits that it has invested substantial effort and garnered significant recognition under the ROBODAWGS name and mark, and as a result ROBODAWGS has become well known as associated with Complainant's team. The domain <robodawgs.com> was registered to Complainant for a decade.
Earlier this year, Complainant inadvertently failed to renew its long-held domain name. When Complainant’s registration expired, Jeffrey Nelson, a former associate of Complainant with actual knowledge of Complainant’s rights in the ROBODAWGS mark, registered the <robodawgs.com> domain name.
At the time of filing the Complaint, it was not known how Mr. Nelson became aware of the lapsed renewal. Mr. Nelson initially registered the domain in his own name, he later changed the registration to a Network Solutions private registration. Once Complainant realized its website at <robodawgs.com> was no longer active, it began its investigation as to who registered it. Respondent was contacted by Complainant and informed of Complainant's prior rights and ownership of ROBODAWGS.
Once Mr. Nelson was identified as the registrant, a representative of Complainant contacted him in June 2012 and requested return of the disputed domain name. Mr. Nelson stated that he was entertaining bids for the <robodawgs.com> domain name which he had registered but never used, and he had an offer for $10,000. Complainant encouraged Mr. Nelson to "do the right thing" and return the disputed domain name to the ownership of the school district and team that had used it for years.
On June 26, 2012, the law firm representing Complainant sent a letter by messenger, to Mr. Nelson at his home, alleging that his registration and selling of the disputed domain name was a violation of the Anticybersquatting Consumer Protection Act (15. U.S.C. §1125(d)) and requesting the return of the disputed domain name. Mr. Nelson did not respond but on July 5, 2012, after receipt of the letter from Complainant's attorneys, Mr. Nelson transferred the <robodawgs.com> domain from registrar Network Solutions to registrar Enom, Inc. and employed the Whois Privacy Protection. On information and belief, Respondent is an agent or affiliated with Mr. Nelson and has knowledge of Complainant's prior rights in ROBODAWG and <robodawgs.com>.
Complainant alleges that Respondent registered the <robodawgs.com> domain name with actual knowledge of Complainant's prior rights in the mark, and long-time ownership of the domain name so as to profit from the value accrued in ROBODAWGS through Complainant's use of the name. Complainant submits that Respondent's use will cause confusion for individuals looking for Complainant’s ROBODAWGS team.
Complainant submits that there is no evidence that Respondent has any rights or legitimate interests in the disputed domain name, especially considering that Respondent has never used the disputed domain name for any legitimate purpose, but has merely held it out for auction.
Complainant further submits that neither is Respondent's registration a legitimate noncommercial or fair use. Complainant submits that it is apparent that Respondent registered the disputed domain name which is identical to Complainant's well-known mark for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to another party for profit, a practice which is expressly prohibited under Paragraph 4(b)(i) of the Policy and federal law.
Complainant submits that Respondent's registration and use of the domain name was made in bad faith. Complainant submits that Respondent knowingly registered the disputed domain name that incorporated Complainant's mark ROBODAWGS in circumstances where Respondent had actual knowledge of Complainant's rights in the ROBODAWGS mark and Complainant’s prior ownership of the <robodawgs.com> domain name. Complainant argues that the registration clearly indicates an attempt by Respondent to trade off Complainant's goodwill and rights in the mark by holding the disputed domain name for the purpose of extracting a profit from a payment from Complainant or a third party, or using the disputed domain name to deceive the public into believing that Respondent's website is in some way affiliated with Complainant's team.
B. Respondent
Respondent submits that during the 2007/2008 academic year, Jeffrey Nelson was a volunteer coach with the FIRST Robotics team at Grandville High School. Jeffrey Nelson ’s son and a friend were part of the team. While working together, the three of them came up with an idea for a robotic dog that could be used for assisting elderly and disabled individuals. They envisioned a robotic dog able to assist with such tasks as monitoring, protection, and certain household tasks. The group members saw the development of this robotic dog as opportunity to both advance their skills in robotics and to help fill a needed gap in the community relating to elder care.
The group immediately began working on the project in their spare time. They named the project “Robo Dawg” both because “RoboDawgs” was the name of the FIRST Robotics team that first got them interested in robotics and because the name fit well with a robotic dog. Respondent claims that since then these individuals have spent countless hours in making this Robo Dawg project a reality. They were eventually joined by a fourth team member, an engineer well-known in the community. Together, the team has been working on designing a robotic assisted living dog. Respondent states that currently, they are not only working on the computer programming aspects of the project, but have also been working with a named tool and die expert, to create physical parts for testing their product ideas.
Respondent submits that by late 2011, as the Robo Dawg product was getting closer to becoming a reality, Jeffrey Nelson began to look into possible websites that would fit with their product name. He used an online company, Namejet, to track several possible domain names. Among the names he tracked were: <robodawgs.com>, <robodawg.com>, <robodog.com>, and <robodogs.com>. He was notified that the domain name <robodawgs.com> had come available for purchase at auction after Complainant had allowed the registration to lapse. Upon review of Complainant’s website, Jeffrey Nelson assumed that Complainant had allowed the site to lapse intentionally. He noted that the site had not been updated since the 2008/2009 academic school year. He also noted Complainant seemed to be using Facebook and Twitter, rather than its own website, as the primary means for meeting its outreach and communication goals.
Respondent submits that Jeffrey Nelson also knew that companies associated with registering and maintaining domains routinely have a policy of giving several notifications and opportunities to renew domain names prior to their being sold at auction. He thought that this would have given Complainant plenty of opportunity to maintain the domain name if it were so inclined. Finally, Jeffrey Nelson also noted that the domain <robodawgs.org> appeared to be available and seemed to him more suitable for Complainant’s nonprofit purposes than his own groups goal of eventual product commercialization.
Based on these assumptions, Jeffrey Nelson bid on the <robodawgs.com> domain name. On March 11, 2012, he won the auction for the domain with a bid of US$101.
Around this time, Jeffrey Nelson began using a privacy registration service and the related pseudonym “Floyd Houseman” in association with the administration of the domain name in order to protect his privacy on the internet.
Soon thereafter, Complainant began soliciting Jeffrey Nelson and requesting to buy the domain from him. On May 14, 2012, he received an email from an administrator at Grandville Public Schools asking if he would be willing to sell the website. Respondent submits that while Jeffrey Nelson was not very interested in selling the disputed domain name, he knew that his project could use the money, and invited Complainant to make an offer. Complainant offered $100, to which Jeffrey Nelson did not respond because he remained largely uninterested in selling the domain.
On May 30, 2012, Jeffrey Nelson received a second offer through Complainant to purchase the disputed domain name, this time through the registrar, for a price of $200. On this occasion he declined the offer. His group remained uninterested in selling the domain and wanted to use it for their robotic dog project.
Eventually, Complainant discovered that Jeffrey Nelson was the owner of the disputed domain name, and individuals associated with the Complainant began to contact others that had no relationship to Complainant’s FIRST Robotics Program or even to Jeffrey Nelson ’s Robo Dawg project in an effort to pressure Jeffrey Nelson into turning over the domain to them.
Jeffrey Nelson did not appreciate the accusations of misconduct that were being brought against him by Complainant and considered selling the domain to another member of the group engaged in the ROBO DAWG project for a nominal fee of $1, in order to take the pressure off himself and resolve the issue.
Finally, in June 2012, Jeffrey Nelson was contacted by an assistant superintendent of Complainant and was once again asked if he would be willing to sell the disputed domain name for $100. He reiterated that he was not interested in selling. The school official then asked Jeffrey Nelson to name a price that he would be willing to sell it for if he was going to sell. In an effort to get Complainant to stop asking him for a price, he responded that he would sell the domain name for $10,000. He also said that he was considering another option for selling “the site” (sic). What he did not say to the official was that the other option was selling “the site” to one of his associates in the project for $1.
Respondent submits that despite the fact that this Robo Dawg project has been an important part of their lives over the last several years, Jeffrey Nelson’s group has made efforts to keep the project largely a secret from the public in order to protect their intellectual property rights and project trade secrets that they have been developing. The need for these efforts explains why the existence of the project would not have become known to Complainant until recently. The goal is to launch a website with the domain name <robodawgs.com> within the next two to five years with late stage products that the group hopes to bring to market in some type of commercial venture. The relatively slow pace of this project is due in part to the limited resources, both in time and money, of the group members and to the extensive nature of the project as a whole.
Addressing Complainant’s submissions Respondent argues that while it is possible for an unregistered, common law service mark to be used as the basis for a complaint, panels have consistently held that there is a burden on a complainant in such a case to prove that the term that is alleged to be a service mark is distinctive. See, e.g., Media West-GSI v. Earthcars.com, WIPO Case No. D2000-0463 (“Complainant does not enjoy the benefit of any presumption of the exclusive right to use a mark afforded by registration and must prove that its mark is distinctive.”). This burden is particularly heavy where the alleged marks are comprised of descriptive terms. See Orbis Holdings Ltd. v. Lu a Feng (FIRST Respondent) &Orbis Search (Second Respondent), WIPO Case No. D2007-0515 (stating that where the mark is comprised of commonly known terms “there is an onus on the complainant to present the Panel with compelling evidence of secondary meaning and distinctiveness through extensive use.”). In such instances, the mere fact that a complainant calls itself by a name does not establish exclusive rights in that term. See Mancini’s Sleepworld v. Laksh Internet Solutions, WIPO Case No. D2008-1036 (noting that the consensus among panels is that “[t]he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Respondent submits that Complainant is attempting to claim extensive common law rights across the United States in the unregistered, alleged service mark “ROBODAWGS” in association with “educational services for K-12 students, namely, an engineering team and competition services.” This attempt must fail because Complainant cannot show service mark rights in the term. Respondent submits that the name ROBODAWGS is highly descriptive for a FIRST Robotics team. The name is a frequently used combination of the words “robo” (a common prefix referring to anything “robotic” in nature or type) and “dawgs” (a commonly used phonetic equivalent of “dogs”) that is obvious to use for a high school robotics team where the school’s mascot is a bulldog. Respondent argues that the fact that team members may refer to themselves collectively by this name does not establish exclusive rights to the name. This is especially true in this case given that there are at least nine FIRST Robotics teams across the country (competitors of Complainant) that use the name “robodawgs” or the phonetic equivalent “robodogs” as team names. In this regard, Complainant refers to two screenshots of <thebluealliance.com> (website associated with FIRST Robotics) showing first twenty results for search of “robodawgs 2012”, taken August 1, 2012, showing that there are several teams with the names “robodawgs” and “robodogs” across the country.
Respondent submits that even a cursory review of the evidence makes it apparent that the term “robodawgs” is widely used for high school robotics teams, and, as such, Complainant cannot legitimately claim that the public, or even the narrow subset of the public associated with FIRST Robotics competitions, associates the term “robodawgs” with any particular FIRST Robotics team. Nor does Complainant even attempt to make such a showing with evidence, instead relying on the conclusory allegation that it has “invested substantial effort and garnered significant recognition” under the name. This allegation alone is simply not enough to establish service mark rights. Accordingly, because Complainant has not and cannot establish the requisite element of service mark rights in the term “ROBODAWGS,” its Complaint must be denied.
Respondent submits that under the Policy a legitimate interest in a disputed domain name can be made by evidence of demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services before notice of the dispute. Paragraph 4(c)(i). He further submits that the evidence required to meet this standard is minimal, and even a showing of perfunctory or superficial steps is enough, citing Donvand Ltd. trading as Gullivers Travel Assocs. v. Gullivers Travel/Gulliver’s Travel Servs., Gullivers Travel Agency & Metin Altun/GTA, WIPO Case No. D2004-0741. Respondent submits that additionally, Panels have held that the fact that a domain name in question is at least somewhat descriptive of a respondent’s product or service is evidence of a legitimate interest in and of itself, citing Fleetstar Info. Sys. Ltd. v. Stephen Morris, WIPO Case No. D2001-0518 (“Common words and descriptive terms are legitimately subject to registration as domain names on a "FIRST-come, FIRST-served" basis.”). See Webvan Grp., Inc. v. Stan Atwood¸ WIPO Case No. D2000-1512 (noting that the fact that the term “Internet Home Grocer” was a logical choice for respondent’s proposed services added credence to his argument that his interest in a related domain name was legitimate).
Respondent argues that he has easily made this showing of legitimate interest in the domain name. The term “robo dawg” is at least somewhat descriptive of the robotic dog of the type that Jeffrey Nelson and his team are developing. Since beginning the project four years ago, they have continuously referred to their robotic dog as a “Robo Dawg”. They have worked on design and programming, and have even worked with an outside tool and die expert on developing prototypes. These efforts, which are much more than perfunctory steps, are supported by declarations, and are “demonstrable preparations to use” the mark and the domain name within the meaning of Paragraph 4(c)(i) of the Rules.
The fact that the existence of Respondent’s project and its Robo Dawg name are not widely known should not be held against him here. Jeffrey Nelson and his group have had, and continue to have, a legitimate interest in maintaining the secrecy of their intellectual property, at least until they are ready to launch their product. It is well known that intellectual property rights can be easily lost if they are not protected, especially when dealing in the trade secrets and potential patent rights that Jeffrey Nelson and his group may ultimately pursue.
Similarly, the fact that the Respondent is not using the <robodawgs.com> domain name at this time should not be held against him here either. Jeffrey Nelson purchased the domain name and held it in under a pseudonym with a privacy registration service as yet another step toward quietly developing his product and meeting his commercial goals. Respondent states that the group is only able to work at a relatively slow pace given their ambitious project goals and limited resources. The product is still years away from completion, so Jeffrey Nelson does not want to launch the site yet. WIPO Panels have routinely recognized that such passive holding of a domain is common and should not be held against a respondent where, as is the case here, respondent has provided business reasons consistent with such a holding period. See Toronto Star Newspapers Ltd. v. Capital Networks Ltd., WIPO Case No. DTV2001-0002 (accepting a domain name holding period of eight years without establishing a website and noting other cases where “Panels accepted business development periods of eight months and two and a half years respectively as consistent in the circumstances with preparation for use of a domain name and legitimate interests.”).
To rule in Complainant’s favor would require the Panel to effectively find that all of Respondent’s witnesses have lied under Oath and have colluded in an effort to commit a massive fraud on the Panel. Such a finding should never be made lightly and should certainly not be made in this case in particular. Compare with Roberta’s, Inc. v. Rick Falck, WIPO Case No. D2001-0042 (“From the four affidavits filed on behalf of the Respondent it is plain that when the Respondent registered the Domain Name he had bona fide plans to supply essential oils through a website connected to the Domain Name. That will only not have been the case if the Respondent and the four deponents are conspiring not to tell the truth. For the Panel to make a finding, which amounts to a finding of fraud, the Panel will need some very persuasive evidence. There is no such evidence.”).
Thus, because of his commercial aspirations and long-term private use of the Robo Dawg name, Jeffrey Nelson has established a legitimate interest in the <robodawgs.com> domain, and the Complainant has failed to establish the second required element of its proofs.
Respondent further argues that Complainant cannot show any bad faith on Jeffrey Nelson ’s part in registering or using the <robodawgs.com> domain name. In attempting to show bad faith on the part of Respondent, Complainant focuses on only two of the factors that the Panel may consider when considering bad faith. Namely, Complainant argues that there is evidence that Respondent registered the domain solely for the purpose of selling it for a profit (a relevant factor under Rule 4(b)(i)) and that Respondent purchased the name solely for the purpose of wrongfully attracting others to his website by creating a likelihood of confusion with Complainants alleged mark (a relevant factor under Rule 4(b)(iv)). Respondent argues that both of these allegations are shown to be baseless when all of the facts are known. First, Complainants allegation that Respondent registered the disputed domain name for the purpose of selling it for a profit is without merit. Jeffrey Nelson has repeatedly stated, and has sworn under Oath in the declaration annexed to the Complaint, that he did not register the <robodawgs.com> domain name with the intention of turning around and selling it for a profit. He has never sought “bids” from third parties. He intended to use the domain to promote his robotic dog project at the time he registered the domain, and he still intends to do so. Additionally, there is no evidence tending to show that Jeffrey Nelson had a basis for suspecting that there were any potential buyers for the domain at the time he registered it. The fact that he was able to buy the domain for only $101 is evidence of the low value that the market in general put on the domain. Furthermore, as discussed above, Jeffrey Nelson had no reason to think that Complainant had any interest in the domain at that time either.
Respondent argues that the fact that Complainant allowed the site to lapse after receiving several notices from the registrar, the fact that the website had not even been updated in several years, the fact that Complainant seemed to be actively using Facebook and Twitter as means to get out its message: all of these facts made Jeffrey Nelson reasonably believe that Complainant did not want or value the <robodawgs.com> domain. In addition, Jeffrey Nelson knew that the <robodawgs.org> domain was available and would be more appropriate for Complainant’s non-profit goals than his own commercial goals. Given all these facts that were known at the time Jeffrey Nelson bid on the <robodawgs.com> domain name, it appears unlikely, even irrational, for him to expect to have turned a profit by selling the site on the open market or back to Complainant.
Respondent further submits that Complainant’s reliance on Jeffrey Nelson’s conversation with the assistant superintendent of Complainant is also misplaced, and its related arguments misconstrue the facts. That conversation took place only after Jeffrey Nelson had repeatedly turned down offers from Complainant to buy the domain name. The school official then called Jeffrey Nelson and asked him to name a price for which Jeffrey Nelson would be willing to sell the domain. In an effort to end the discussion, Jeffrey Nelson told him $10,000. An offer cannot be considered evidence of bad faith under such circumstances, especially given the repeated solicitations from Complainant prior to the offer. See Barlow Lyde & Gilbert v. The Bus. Law Grp., WIPO Case No. D2005-0493 (refusing to find evidence of bad faith from an offer to sell where the offer was first solicited by complainant).
Likewise, the unsupported allegation in the Complaint that Jeffrey Nelson “was entertaining bids for the <robodawgs.com> domain” is untrue, and likely arose from Jeffrey Nelson’s indication that he had other plans to get rid of the domain name, namely, to sell it for $1 to his friend, in order to be done with Complainant’s strong arm tactics. Respondent argues that thus, when all the facts are viewed, it becomes clear that Jeffrey Nelson had no bad faith intention to sell the domain for a profit when he registered it. Furthermore, the contention that Jeffrey Nelson bought the site for the purpose of creating confusion with the Complainant’s FIRST Robotics team or somehow intended to trade off the good-will of that program is also baseless. Jeffrey Nelson intends to use the site to support commercialization of robotic assistance dogs across the United States and he has stated under Oath that he does not intend to use “the site” (sic) in association with any FIRST Robotics teams. There is no likelihood of confusion between the two parties as his intended use of the disputed domain name is completely unrelated to Complainant’s use of the term ROBODAWGS to refer to a high school robotics team. His target audience will be potential investors and purchasers of assistance dogs across the country. These individuals and groups are simply not in the same target market as the students that Complainant serves. Thus, Complainant cannot make out a valid basis for showing that Respondent registered the domain in bad faith.
C. Additional Submissions of Complainant
In Additional Submissions, Complainant submits that when the facts are separated from revisionist explanations, the following relevant facts are clear:
Complainant has rights, accrued through prior and continuous use of the ROBODAWGS mark and disputed domain name <robodawgs.com> for a substantial length of time.
Respondent had actual knowledge of Complainant's prior use at the time he registered the disputed domain name.
Respondent has made no public use of the ROBODAWGS that would entitle him to claim rights in the mark.
Respondent had other options for a domain name to serve the purpose of his alleged future project and would not frustrate Complainant's long held website address and the historical links thereto.
Respondent tracked and registered Complainant's exact domain name.
Respondent did not reveal either his identity or his alleged future purpose for the domain until after the Complainant, a school booster club, incurred the cost of filing this Complaint.
Respondent communicated to Complainant a request for $10,000 to transfer the disputed domain name.
Respondent's knowledge, targeting of the identical domain and refusal to return the inadvertently lapsed domain for reimbursement, along with the documented and clear demand for payment are sufficient under the rules to constitute bad faith.
D. Additional Submissions of Respondent
In Additional Submissions filed in response to the Procedural Order issued by the Panel on August 20, 2012 Respondent furnished inter alia a sworn statement from a professional in the areas of tooling and die casting who averred that he had been working with Jefrrey Nelson and others to help them make models and prototypes of various projects for the past year. He averred inter alia: “While I do not recall the exact date when I first became aware of the ROBO DAWG product, I know that I was aware of the product and its name by April of 2012 at the latest.”
Complainant has used the name ROBO DAWG as the name of a team of robotics and engineering students who engage in the international FIRST Robotics competition held between schools each year.
Respondent is the agent or alias for Jeffrey Nelson who was a coach for Complainant’s robotics team during the academic year 2007/2008 while his son was a member of the team.
The disputed domain name was originally registered and owned by Complainant but was allowed to lapse. The disputed domain name was subsequently purchased at auction by Jeffrey Nelson on March 11, 2012 with a bid of US$101.
On July 10, 2012 Complainant filed an application number 85672787 for registration of a US Trademark ROBODAWGS for services in international class 041 being “educational services for K-12 students, namely, an engineering team and competition services” and claiming first use in commerce on August 1, 1998.
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."
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 claims common law service mark rights in ROBODAWG.
On the eve of filing this Complaint, on July 10, 2012, Complainant filed the abovementioned application number 85672787 for registration of a US Trademark ROBODAWGS for services in international class 041.
The three member panel in Alpine Enm’t Grp., Inc. v. Walter Alvarez, WIPO Case No. D2006-1392 stated that “it is well-established that a trademark application alone is not sufficient evidence to establish complainant rights in a mark for the purposes of the Policy. See, e.g., First Tuesday Ltd. v. The Startup Generator & Christopher Stammer, WIPO Case No. D2000-1732; or Monty & Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300.”
Both parties accept that Complainant has used the name ROBODAWGS since 1998. In this Complaint and in said trademark application, Complainant claims first use in commerce on August 1, 1998.
To succeed in this proceeding on the basis of common law rights in the mark, Complainant must show that the name has become a distinctive identifier associated with Complainant or its goods or services. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that there is a consensus among panelists that “a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.”
There is no evidence before this Panel that Complainant has used the name as a trademark or service mark. On the evidence Complainant has used ROBODAWGS merely as the name for its robotics team and not in connection with the sale of goods or provision of services.
Complainant has failed to establish that it has rights in ROBODAWGS as a trademark or service mark as required by the first element of the test in paragraph 4 of the Policy. It follows that the Complaint must fail.
In the circumstances, this Panel makes no finding on whether Respondent has rights or legitimate interest in the disputed domain name, but comments that it is a case where the limitations of the paper-based procedures under the Policy has made it impossible to satisfactorily test the claims made and the evidence adduced by Respondent.
Additionally this Panel makes no finding as to whether the disputed domain name was registered or is being used in bad faith.
As Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <robodawgs.com> domain name REMAIN WITH Respondent.
James Bridgeman, Panelist
Dated: September 20, 2012
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