DoStuff Media, LLC v. James Blair
Claim Number: FA1305001502587
Complainant is DoStuff Media, LLC (“Complainant”), represented by Katherine Klammer Madianos, Texas, USA. Respondent is James Blair (“Respondent”), represented by Darren Spielman of Kain & Associates, Attorneys at Law, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <do416.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as panelists in this proceeding.
The Hon. Neil Brown Q.C., The Hon. Charles K. McCotter, Jr. (ret.) and Debrett G. Lyons as panelists (“Panel”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2013; the National Arbitration Forum received payment on May 30, 2013.
On May 31, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <do416.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 May 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 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@do416.com. Also on May 31, 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.
A timely Response was received and determined to be complete on June 20, 2013.
A timely Additional Submission was received from Complainant and determined to be complete on June 25, 2013.
On June 26, 2013, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed The Hon. Neil Brown Q.C., The Hon. Charles K. McCotter, Jr. (ret.) and Debrett G. Lyons (chair) as Panel.
Having reviewed the communications records, 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 asserts trademark rights in DO512, DO310 and in the term DO generally and alleges that the disputed domain name is confusingly similar to its trademarks.
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 argues that the disputed domain name is not confusing similar to either DO512 or DO310.
Respondent submits that Complainant has failed to provide any evidence of secondary meaning of the term “DO”.
Respondent asserts that it has spent time and money developing a plan for a real estate business which is non-competitive with Complainant’s services and so it has not acted in bad faith and has rights and a legitimate interest in the domain name.
Respondent submits that the doctrine of laches should be applied since Complainant has delayed nearly five years to bring this action.
C. Additional Submissions - Complainant
Complainant asserts that it has established common law rights to the DO512 trademark by using that trademark in commerce in connection with its website at www.do512.com at least two years before the date on which Respondent registered the disputed domain name.
The factual findings pertinent to the decision in this case are that:
1. Complainant operates or regulates various websites which report on events and happenings in different US cities all identified by the word “DO” followed by the area code or other geographic indicator of the geographic area that is the subject of the website.
2. Complainant is the owner of United States Trademark Reg. Nos. 4,292,066, filed July 3, 2012 for the trademark DO512 and 4,292,065, filed July 3, 2012 for the trademark DO310.
3. The disputed domain name was registered on August 21, 2008.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold inquiry – an investigation into whether a complainant has rights in a trademark, together with an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights for the purposes of paragraph 4(a)(i). Since Complainant provides evidence of its United States Patent and Trademark Office trademark registrations for DO512 and DO310, the Panel is satisfied that it has trademark rights in those terms (see, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
Nevertheless, Panel is not satisfied that the disputed domain name is confusingly similar to either of Complainant’s registered trademarks DO512 or DO310. For the purposes of comparison, the non-distinctive gTLD, “.com”, can be disregarded (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The comparisons then resolve to DO416 with either DO512 or DO310. Panel finds that whilst the integer “DO” has a degree of inherent distinctiveness, absent proof of secondary meaning, it is not of sufficient weight to cause the compared terms to be confusingly similar when they otherwise combine with quite different numerals and where, in all cases, the numerals comprise a quantitatively significant portion of the composite wholes.
Accordingly, the Panel finds that the disputed domain name is not confusingly similar to the registered trademarks DO512 or DO310.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. The question then arises whether the disputed domain name is confusingly similar to the unregistered trademarks relied on by Complainant. Complainant asserts that it has common law trademark rights to the following terms: DO512, DO312, DO713, DO314, DO317, DO414, DO615, DONYC, and DOLA. Moreover, in its Additional Submissions, Complainant alleges that it has established common law rights to the DO512 trademark by using the DO512 trademark in commerce in connection with its website listing events for at least two years before the date of registration of the disputed domain name – that is to say, since September 2006 when the website resolving from the domain name <do512.com> came into use.
Complainant asserts that prior to the registration date of the disputed domain name over 370,000 unique visitors visited the www.do512.com website in consequence of which it is said that that Complainant’s DO512 trademark became well known.
Complainant goes on to list other domain names it has registered which are composed of the term “DO” together with an area code or geographic descriptor, including <do312.com> in June 2010, <do713.com> in June 2010, <do314.com> in May 2011, <do317.com> in October 2011, <do414.com> in May 2011, <do415.com> in October 2011, <do615.com> in June 2012, <donyc.com> in October 2012, and <dola.com> in October 2012 and claims that it has common law or unregistered trademarks in each of them.
The UDRP is administered not just by the National Arbitration Forum, but also by the World Intellectual Property Organization (“WIPO”). WIPO publishes an “Overview of 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.
There is no evidence of the sort described above included with the Complaint either in connection with the alleged trademark rights in DO512 or in relation to a broader claim to the other alleged “DO” prefixed trademarks set out above. Complaint claims that DO512 is well known as a trademark however the only material which could support that claim is a “Google Analytics” report giving statistics of Internet visitors to Complainant’s www.do512.com website. As Respondent rightly submits, those statistics are of user traffic and are, at best, a very indirect measure of trademark recognition. Panel would add that the figure itself is relatively modest. Moreover, by its own admission, Complainant indicates that any trademark significance of DO512 would be limited to one city in Texas.
In the result, there is nothing to justify a claim to common law trademark rights in either DO512 or the or the other alleged “DO” prefixed terms set out above as those claims have not been substantiated by evidence submitted to the Panel. For that reason there is no reason to conclude that the disputed domain name would be confusingly similar to any relevant unregistered rights.
Accordingly, the Panel finds that the disputed domain name is not confusingly similar to the alleged unregistered trademark DO512 or the other expressions prefixed by the letters “DO”, as no such trademarks have been established.
Panel finds that Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.
No findings required (see 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)).
No findings required.
Having failed to establish at least one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <do416.com> domain name REMAIN WITH Respondent.
The Hon. Neil Brown Q.C.,
The Hon. Charles K. McCotter, Jr. (ret.)
Debrett G. Lyons (chair)
Panelists
Dated: July 9, 2013
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