Bangz, Inc. v. Afrodite Pelardis
Claim Number: FA1302001486688
Complainant is Bangz, Inc. (“Complainant”), represented by John J. Zidziunas, New Jersey, USA. Respondent is Afrodite Pelardis (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bangz.com>, registered with NETWORK SOLUTIONS, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2013; the National Arbitration Forum received payment on February 22, 2013.
On February 25, 2013, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <bangz.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, 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 March 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2013 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@bangz.com. Also on March 4, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.
The Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and rules and principles of law that it deemed applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that the disputed domain name is identical to a name it has used for some time.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the name BANGZ in relation to its salon and spa services provided in Montclair, New Jersey.
2. Respondent has provided salon services in nearby New Jersey under the name “Salon Pelardi”.
3. The disputed domain name was registered on April 4, 1999.
4. For a period the domain name diverted to a website, www.salonpelardi.com, that promotes Respondent’s business.
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.
As indicated above, paragraph 4(a)(i) of the Policy requires a complainant to have trademark rights. Proof of trademark rights is a threshold matter and is generally considered by panels before any assessment of whether the disputed domain name is identical or confusingly similar to the alleged trademark (and before the other two elements of the Policy)
It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of that right (see, e.g., Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003)). Complainant has not given evidence of any such registration.
Paragraph 4(a)(i) of the Policy does not, however, distinguish between registered and unregistered trademark rights and a trademark registration is not necessary if Complainant can establish so-called “common law” rights in the trademark (see McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy)). The Policy is consistently read in this way (see, for example, SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000); Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006); Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007)).
Complainant chose to bring these administrative proceedings with the National Arbitration Forum, however the Policy is also administered by another major forum, the World Intellectual Property Organisation (WIPO). In addition to publishing its decisions under the Policy, WIPO makes publicly available its so-called “Overview of WIPO Panel Views on Selected UDRP Questions,” the Second Edition[1] of which asks at paragraph 1.7: What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights? In answer, the consensus view of UDRP panelists is that:
The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, 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. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.
That approach has been routinely applied in decisions made by panelists with the National Arbitration Forum and has direct application to the present matter.
The underscoring has been added by this Panel with reason. Complainant has stated that it does not possess the trademark rights to “Bangz” because there are multiple “Bangz” salons located in the Washington, DC area. A simple internet search made by Panel in fact shows use of the term “Bangz” in relation to hair dressing services across the United States. That is no surprise to the Panel since the term is an obvious misspelling of the descriptive word “bangs” (always used in the plural) which in American English is the name given to the fringe of hair usually cut squarely across the forehead. Therefore, for the reasons given in the WIPO Overview, Complainant bears a higher onus of proof that the name has acquired secondary meaning and indicates Complainant to the exclusion of others.
As a matter of law, there is no single definition of common law or unregistered trademark rights. It has been said that a complainant has common law rights if it could sustain an argument of passing off. To do so, a reputation must be proved. A reputation will depend on use and the precise extent of the use required will depend on the name used (as discussed) and the nature of the business itself.
In many cases, the injunctive or other relief for passing off granted by a court will be of national effect however passing off actions have frequently succeeded based on regional or even local reputation or goodwill. So, for example, the courts have over the years shown willingness, in the right circumstances and provided with cogent evidence, to uphold passing off claims brought by localized service providers such as restaurants, hotels, bars, builders and car yards. These are principles which have been adopted by panelists applying this Policy and there is no reason why hair dressing salons would not fall into this same class.
Nonetheless, in this case Panel has nothing of substance on which to base a finding of common law trademark rights. There is no evidence provided to support the claims made in the Complaint. Without evidence Panel must treat those claims as bald assertions to which little or no weight can attach (see, for example, Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) where panel said “Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”)
There is no proof of establishment of Complainant’s business in 1994 under the name “Bangz”, or otherwise. There is no evidence of the accolades it is said to have received. There is no other proof of the alleged reputation said to exist in the “Bangz” name. There are no examples of advertising or promotion, no turnover, no third party evidence of the repute of the business. Nothing in fact to prove reputation (see, for example, Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”)).
On the contrary, the name is to a degree non-distinctive of hair salon services and there are Complainant’s admissions that third parties are indeed using the same name and that Complainant has no trademark rights.
As indicated, Panel is sensitive to the balance to be given to the evidence of reputation in cases of local service providers, however there is nothing at all on which Panel can support a conclusion of even a geographically limited common law right to the name “Bangz”. Evidence of, for example, recognition of Complainant’s business in ELLE magazine as was claimed may have been influential but was absent. Whilst there was in evidence proof of concluded court proceedings brought by Complainant against Respondent (and another) and repetition in Complainant’s court petition of the alleged media recognition of the name “Bangz”, this Panel cannot infer those claims were court scrutinized since the evidence also shows that Complainant sought and obtained default judgment.
Accordingly, the matters of Respondent’s interest in the domain name (legitimate or otherwise) and the assessment of whether its actions were in good faith or not do not come for consideration because, on the evidence, Complainant has failed to establish the first limb of the Policy since it has not adequately shown itself to have rights in a trademark. For that reason Panel has not made any findings in relation to paragraph 4(a)(ii) or 4(a)(iii) 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).
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <bangz.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: April 24, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page