Blacklogic Inc. v. Stefan Silke
Claim Number: FA1209001463146
Complainant is Blacklogic Inc. (“Complainant”), represented by Fikrat Rafikov, Canada. Respondent is Stefan Silke (“Respondent”), represented by Morris E. Turek, Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackvpn.com>, registered with GoDaddy.com, LLC.
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.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2012; the National Arbitration Forum received payment on September 18, 2012.
On September 19, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <blackvpn.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 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@blackvpn.com. Also on September 20, 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 October 5, 2012.
A timely Additional Submission was received from Complainant on October 8, 2012.
An Additional Submission was received from Respondent on October 10, 2012.
On October 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Eduardo Magalhães Machado 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant informs that it provides secured VPN services to customers around the world. Complainant informs that it registered the word “Blacklogic” as trademark before the United States Patent and Trademark Office (“USPTO”) and that it provides VPN services under the names “Blacklogic VPN”, “Blacklogic”, or the shorter name “Black VPN”.
Complainant alleges it also holds a trademark registration for “BlackVPN” before the USPTO.
Complainant alleges that “BlackVPN” sounds very similar and very confusing to the name “Blacklogic” and “Blacklogic VPN” and that sometimes people mix these names and assume that it is the same company.
Complainant states that in Google search terms Internet users usually search for “Blacklogic VPN” or “BlackVPN” and that during the search process consumers assume that they are looking for Blacklogic VPN, but in reality they are confused by Respondent who illegally owns the disputed domain name.
Complainant alleges that “Blacklogic VPN”, “Blacklogic,” and “BlackVPN” are identical search terms and there should not be two companies offering identical services.
Complainant alleges that Respondent provides the exact same services as Complainant, and, therefore, the disputed domain name must be transferred to Complainant in order to avoid any future confusion by customers.
Complainant argues that since 2007 it has also been known as “Blackvpn,” and “Blacklogic Inc” was registered as a Canadian Federal corporation under the Canada Corporations Act on September 26th, 2007.
Complainant alleges in September 2012 it also registered “BlackVPN Inc.” in Canada.
Complainant alleges that it was known as “BlackVPN” since September 2007 and that Respondent was never known by the disputed domain name until the beginning of 2010. Complainant argues that Respondent has intentionally used the disputed domain name to divert customers from Complainant.
Complainant argues that the Respondent does not have rights or legitimate interests in the disputed domain name, as it does not make any noncommercial or fair use of it.
Complainant alleges that the domain name was registered in bad faith, as Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor (i.e. the Complainant) and to divert Complainant’s customers.
B. Respondent
Respondent alleges that Complainant fails to provide any official documentary evidence whatsoever of its ownership of the trademark registration for BLACKLOGIC (such as a copy of a federal trademark registration).
Respondent also points out that the underlying filing date of the alleged U.S. registration is January 31, 2011, which is subsequent to Respondent’s registration of the disputed domain name and use of BLACKVPN as a trademark for its virtual private network services.
Respondent also alleges BLACKLOGIC and BLACKVPN are not confusingly similar in terms of appearance, sound, or commercial impression.
Respondent also points out that Complainant does not provide evidence to support its allegation that it owns a “trademark registration for the word BLACKVPN in USPTO.” In lieu of providing any official documentary evidence, Complainant provides a chart on page 3 of Annex A that lists information about an alleged service mark.
Respondent contends that what Complainant refers to as a “trademark registration” is actually only a pending trademark application filed less than two weeks before Complainant instituted this proceeding. Moreover, Respondent notes that the filing date of the alleged application is subsequent to Respondent’s registration of <blackvpn.com> and use of BLACKVPN as a trademark for its virtual private network services.
Regarding Complainant’s allegation that it has been providing virtual private network services under the names BLACKLOGIC, BLACKLOGIC VPN, and BLACKVPN since 2007, Respondent alleges that the only evidence provided by Complainant to partially corroborate its assertion is a Canadian corporate registration certificate that shows Complainant was incorporated under the name “Blacklogic Inc.” in September 2007 (Annex A, Page 5). Respondent alleges that such evidence is insufficient to show service mark usage of BLACKLOGIC or BLACKLOGIC VPN.
Respondent also alleges, regarding Complainant’s submitted evidence of what appears to be a Canadian corporate registration certificate showing a corporation by the name of “BlackVPN Inc.” formed on September 17, 2012 (Annex A, Page 6), that it does not constitute evidence of service mark usage, and that there is no indication of the legal relationship between Blacklogic Inc. and BlackVPN Inc.
Furthermore, Respondent alleges that BlackVPN Inc. is not a party to this proceeding and there is no indication of what rights, if any, BlackVPN Inc. owns in any trademarks alleged by Complainant or in the domain name at issue.
Finally, Respondent points out that BlackVPN Inc. was formed a mere three days before this proceeding was instituted.
Respondent alleges that Complainant has failed to present even evidence that it owns rights to any trademark or service mark that is identical or confusingly similar to the disputed domain name.
Respondent informs that it registered the disputed domain name on April 20, 2009, for the purpose of advertising and offering virtual private network services under the trademark BLACKVPN. In approximately June 2009, Respondent actually began advertising and offering virtual private network services under the trademark BLACKVPN.
Respondent is currently a Director of BlackVPN Limited, a Hong Kong corporation that was formed in November 2010. Respondent has attached a copy of the Certificate of Incorporation. Under the direction of Respondent, BlackVPN Limited continues to advertise and offer virtual private network services under the BLACKVPN trademark.
Respondent also contends that Complainant’s assertions about how Respondent has intentionally used the domain and BLACKVPN trademark to mislead consumers and steal customers should be given no weight or merit since they are not corroborated by facts or evidence.
Respondent concludes by arguing that it made use of the disputed domain name and the BLACKVPN trademark in connection with a bona fide offering of virtual private network services well before notice to Respondent of the dispute.
C. Additional Submissions
In its additional submission, Complainant provided a copy of a United States trademark registration for the mark BLACKLOGIC. Complainant has provided information about registration of two Canadian companies (Complainant and BlackVPN Inc.), and has alleged that as they have the same director and address it would be evident that they are related companies. Complainant also provides the definition for VPN taken from <www.dictionary.com>. Complainant provides screenshots from <webarchive.org> to evidence that it has been using the trademark BLACKLOGIC since September 2007. Complainant alleges that the oldest screenshot for Respondent’s website is dated August 13, 2010. Complainant also submits search results from Google archive. Complainant also provides quotes “received from neutral people” in support of its allegations. Finally, Complainant alleges that Respondent does not hold any trademark registration for BLACKVPN and that the company “BlackVPN Limited” is not a party to this proceeding and there is no indication of what rights, if any, BlackVPN Limited owns in any trademarks or in the domain name at issue.
In its additional submission, Respondent notes that Complainant’s U.S. registration does not list any first use dates because the underlying application was filed under Section 44(e), which allows for registration of a trademark in the U.S. based solely on a foreign trademark registration. Respondent alleges such U.S. trademark registration is subject to cancellation on the basis of fraud and that the underlying application filing date is subsequent to the first use of BLACKVPN by Respondent and the corporation of which he is a director.
Respondent contests that even if Complainant has sufficiently proven its prior use of BLACKLOGIC, Complainant has failed to show how the domain <blackvpn.com> is confusingly similar. The only similarity is that both incorporate the word “black” and when compared in their entireties, they do not look alike, sound alike, or even have similar commercial impressions.
Regarding Complainant’s submission of what appears to be statements from “neutral people” about whether they believe the BLACKLOGIC trademark and the <blackvpn.com> domain are confusingly similar, Respondent argues that these statements from anonymous individuals in response to unknown questions are hearsay and should be given no weight or merit whatsoever.
Regarding Figure 6 of Complainant’s Additional Submission, where Complainant has attached a screenshot allegedly demonstrating that “Complainant’s website <blacklogic.com> was well known by the search term ‘blackvpn’ [a] long time before the Respondent started his operations.”, Respondent states it is at a loss as to how this screenshot demonstrates the truth of that allegation.
Respondent alleges that, in fact, a Google search of “blacklogic” does not return any results on the first page having to do with Respondent’s business operations. Similarly, a Google search of “blackvpn” does not return any results on the first page having to do with Complainant’s business operations. Respondent concludes that there is simply no credible evidence that Complainant is publicly known as “BlackVPN” or “Black VPN.” In addition, Respondent states that Complainant has provided absolutely no evidence that it has ever used the name BLACKVPN (or BLACK VPN) as a trademark in connection with its virtual private network services.
The Panel finds that the domain name at issue was registered on April 20, 2009.
The panel finds that Complainant holds a trademark registration for the BLACKLOGIC mark with the USPTO (Reg. No. 4,062,535 filed Jan. 31, 2011; registered Nov. 29, 2011).
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.
Respondent argues that Complainant does not own a trademark registration for the BLACKVPN mark but merely filed a trademark application two weeks prior to bringing this action. Respondent contends that Complainant’s submitted evidence should not even be considered because it is just a chart and not the actual printout from the USPTO. Further, Respondent argues that Complainant’s assertion that it has been providing virtual private network services under the names Blacklogic, Blacklogic VPN, and BlackVPN since 2007 are wholly unsubstantiated as the only evidence submitted is a Canadian corporate registration certificate showing that Complainant was incorporated under the name Blacklogic Inc. in September 2007. Respondent argues that this evidence is not sufficient to establish any rights in the marks asserted. Lastly, Respondent notes that Complainant’s submitted evidence of incorporation in Canada under the BlackVPN, Inc. name shows that such action was not taken until September 17, 2012.
Complainant notes that it has registered the BLACKLOGIC mark with the USPTO (Reg. No. 4,062,535 filed Jan. 31, 2011; registered Nov. 29, 2011). The Panel finds that Complainant has established rights in the BLACKLOGIC mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO, and that such rights date back to the filing date of January 31, 2011. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also 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”).
However, the Panel finds that Complainant has not established rights in the BLACKVPN mark under Policy ¶ 4(a)(i). The Panel notes that Complainant has not submitted evidence relating to its commercial usage of the BLACKVPN mark, or any evidence that is known or doing business under BLACKVPN.
Respondent also asserts that the <blackvpn.com> domain name is not confusingly similar to the mark BLACKLOGIC, the mark in which Complainant holds trademark rights. Respondent states that the terms are not “confusingly similar in terms of appearance, sound, or commercial impression.” The Panel agrees with Respondent’s allegations and finds accordingly under Policy ¶ 4(a)(i). See Broadcom Corp. v. Smoking Domains, FA 137037 (Nat. Arb. Forum Feb. 11, 2003) (finding that the <broadcommunications.com> domain name was not confusingly similar to the complainant’s BROADCOM mark because “Complainant is not entitled to protection for every usage of the word ‘broad’ in combination with other terms”).
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), and, therefore the Panel denies the Complaint. See Diversified Mortgage, Inc. v. World Fin. Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that its “rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks”); see also Thomas Alarm Sys., Inc. v. cHEXx Partners, FA 1303478 (Nat. Arb. Forum Mar. 12, 2010) (finding the complainant had failed to prove secondary meaning when its “sole allusion to common law ownership of that trademark is its provision to the panel of articles of incorporation indicating that Complainant has been in business since 1984”).
Considering that all three elements of the Policy must be met and that the Complainant has failed to satisfy the first element, 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)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <blackvpn.com> domain name REMAIN WITH Respondent.
Eduardo Magalhães Machado, Panelist
Dated: October 25, 2012.
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