TimeWorks, LLC v. Shadwan Swed
Claim Number: FA1309001519030
Complainant is TimeWorks, LLC (“Complainant”), represented by Enrico Schaefer of Traverse Legal, PLC, Michigan, USA. Respondent is Shadwan Swed (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plrstore.com>, registered with eNom, Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2013; the National Arbitration Forum received payment on September 11, 2013.
On September 16, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <plrstore.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 September 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@plrstore.com. Also on September 17, 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 October 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems 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 on July 14, 2013, Respondent stole the disputed domain name <plrstore.com> from Complainant. This apparently was done by hacking Complainant’s HostGator.com webhosting account to access Complainant’s webmail accounts, and then using that access to transfer the domain name out of Complainant’s GoDaddy.com account. Respondent also allegedly copied the website and products associated with the domain name, and continues to operate the website, interacting with Complainant’s customers and selling Complainant’s products.
Complainant contends that the disputed domain name is identical to PLRSTORE.COM, in which Complainant claims common law trademark rights. Complainant has owned and used this mark since acquiring the disputed domain name on March 4, 2012. Complainant states that it has used the domain name in connection with a successful digital product store since October 2012, and that the store has become a globally recognizable digital product leader selling marketing articles, e-books, website templates, blog templates, scripts, software, videos, and other digital products. Complainant states further that it sells its products in over 168 countries, and that Complainant has achieved high search engine positions and significant daily website traffic due to significant investment of time and money. Overall, Complainant has had over 1.4 million website visits and 26,000 unique visitors, and over 360,000 web pages have been downloaded via the <plrstore.com> domain name.
Complainant contends further that Respondent does not own any rights or legitimate interests in the <plrstore.com> domain name, and that Respondent registered and is using the disputed domain name in bad faith. Respondent's theft constitutes a criminal act, which does not confer legitimate rights or interests to Respondent and is indicative of bad faith. Furthermore, Respondent has made multiple attempts to sell the domain name at a profit.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has not proved that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights. The Panel further finds that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and has been used in bad faith.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant used the disputed domain name <plrstore.com> from October 2012 until July 2013 for a store that sold digital products. Complainant claims to have acquired common-law trademark rights in the mark PLRSTORE.COM as a result of this use.
In order to show common-law rights for purposes of the Policy, Complainant must present evidence that the name has acquired secondary meaning—i.e., that it has become a distinctive identifier associated with Complainant or its goods or services. Such evidence may include length and amount of sales under the claimed trademark, the nature and extent of advertising, consumer surveys, and media recognition. A conclusory allegation of common law rights is normally insufficient, even if undisputed. Where the claimed mark is comprised of descriptive or dictionary words, Complainant has a greater onus to present compelling evidence of secondary meaning or distinctiveness. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 1.7 (2d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview/; Bangz v. Pelardis, FA 1486688 (Nat. Arb. Forum Apr. 24, 2013) (quoting the WIPO Overview with approval); see also, e.g., LD Products, Inc. v. Webatopia Marketing Ltd., FA 1360908 (Nat. Arb. Forum Jan. 7, 2011) (denying claim in default case due to lack of evidence supporting common-law trademark rights); Chicago Restaurant & Entertainment Guide, Inc. v. Polat, FA 1310901 (Nat. Arb. Forum Apr. 22, 2010) (same).
The digital products that Complainant claims to have offered for sale using the domain name appear to have been those commonly referred to as private label rights, or PLR, products. In other words, Complainant used the domain name <plrstore.com> to operate a PLR store—at best a descriptive use of the term. The Panel therefore must assess whether Complainant has offered sufficient evidence showing that its claimed mark PLRSTORE.COM acquired secondary meaning as a result of Complainant’s nine months using the mark.
Complainant states that its website “has become a globally recognizable digital product leader selling marketing articles, ebooks, web site templates, blog templates, scripts, software, videos, and a variety of other digital products.” In support of this assertion Complainant references Annex 2 to its Complaint, which consists of a DomainTools domain report dated July 19, 2013. The report documents the registration history of the domain name but says nothing about the website content, use, or recognition, aside from depicting various historical screenshots of the website.
Complainant states further that its website “has a global customer base selling to customers in over 168 countries,” and “has achieved high search engine positions and significant daily website traffic due to significant investment of time and money by Complainant”; and that the site has had over 1.4 million hits, 360,000 page loads, and 26,000 unique visitors.
In support of these assertions Complainant references Annexes 3 and 4 to the Complaint, which are statistical reports apparently generated by AWStats purporting to show traffic on Complainant’s website. These reports reflect Complainant’s claims regarding accesses of its website, but contain no information about sales, customers, search engine recognition, or Complainant’s investment in its site.
The Panel has scoured all of the annexes submitted by Complainant, and has been unable to find any evidence that PLRSTORE.COM has acquired secondary meaning. Nor does a cursory Google search offer any support for such a claim. To the contrary, it appears that unrelated descriptive uses of “PLR store” predominate to such an extent that the Panel found no references whatsoever associated with Complainant or the disputed domain name.
In the absence of evidence to support Complainant’s trademark claims, the Panel is bound to find that Complainant has failed to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Although the Panel’s finding as to the first element is dispositive of the present matter, the Panel views Respondent’s actions as clearly evincing a lack of rights or legitimate interests in respect of the disputed domain name, and registration and use of the domain name in bad faith. The Panel so finds.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <plrstore.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: October 15, 2013
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