Giva, Inc. v. R4L Privacy
Advocate
Claim Number: FA0711001110724
PARTIES
Complainant is Giva, Inc. (“Complainant”), represented by Ron
Avignone, California, USA. Respondent is R4L Privacy Advocate (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <giva.com>, registered with Tucows Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 16, 2007; the
National Arbitration Forum received a hard copy of the Complaint on November 16, 2007.
On
On December 5, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 26, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@giva.com by e-mail.
A timely Response was received and determined to be complete on
On
Thereafter, the Panel requested the parties to
submit information to address whether Complainant had established common law
rights in the GIVA mark.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant holds a trademark registration for the GIVA mark
with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 3,275,239 issued
Complainant states that Respondent is not using the domain name to provide a bona fide offering of goods or services and the site is only being used for pay-for-click advertising. Furthermore, Complainant states the Respondent is not commonly known as <giva.com>. Complainant alleges that Respondent acquired the domain name primarily for the purpose of selling it to the highest bidder.
Finally, Complainant claims that
the site displays links to various commercial websites that offer goods and
services identical, directly competitive, or related to the services provided
by Complainant.
B.
Respondent
Respondent states when Complainant chose its name it did so “knowing
fully well that Giva.com was already registered.” According to Respondent, “GIVA” does not
describe Complainant’s business.
Respondent states that during the eight years since the domain name was
registered, Complainant has done nothing to make a “‘good faith’ effort to
acquire the domain.” Respondent denies
that the domain name had been transferred previously. According to Respondent, the domain name
“goes to a PPC site selling products and services not remotely related to
Complainant’s business.”
FINDINGS
Complainant first used the mark GIVA in
commerce on October 27, 1999. It filed
is application to register GIVA with the USPTO on
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
It has been consistently held that a complaining party may not
satisfy the requirements of Policy 4(a)(i) if the complainant’s
registration and rights do not predate the respondent’s registration of a
similar domain name. Weil Lifestyle, LLC v. Vertical Axis, Inc.,
FA 926455 (Nat. Arb. Forum May 9, 2007) (Policy 4(a)(i)
not satisfied where the respondent registered its domain name one month before the
complainant’s first use in commerce of its mark); Transpark
LLC v. Network Adm'r, FA 135602 (Nat. Arb. Forum Jan. 21, 2003) (the
complainant failed to satisfy Policy 4(a)(i) because the respondent's domain
name registration predated the complainant's rights in its mark by nearly two
years); Phoenix
Mort. Corp. v. Toggas, D2001-0101 (WIPO
Although the WHOIS
information for the disputed domain name indicates that it was first registered
on April 7, 1999, Complainant asserts that it was transferred in 2003 to one
Michael Brooks, and that Mr. Brooks is the current owner of the <giva.com>
domain name. Even if the Panel were
to adopt Complainant’s assertion on this issue, see The Christensen Firm v. Chameleon Data Corp., 2006 WL 3158246
(W.D. Wash. 2006), the Panel would find only that the relevant registration
date for the <giva.com> domain name is January 5, 2003.
Thus, for Complainant to
prevail on this issue it must establish that it held common law rights in the
mark GIVA prior to the date the domain name was registered. To establish secondary meaning, or common law
rights, a complaining party must show that its mark has acquired sufficient
distinctiveness through use. Chromomalloy Men’s Apparel Group v. Burch
& Hatfield Formal Shops, D2000-1046 (WIPO
Although Complainant began
using the word “GIVA” in commerce in 1999, the record (including the supplemental information
provided by Complainant) fails to establish that its mark acquired secondary
meaning prior to the date the domain name was registered. Thus, for the purposes of the Policy, Complainant
did not acquire “rights” in “GIVA” until at the very earliest, 2006, three
years after the registration of the domain name. Accordingly, Complainant has not satisfied
the requirements of Policy
4(a)(i).
DECISION
Having failed to establish that the domain name is confusing similar or
identical to a trademark in which Complainant has rights, the Panel concludes
that relief shall be DENIED.
Dated: February 4, 2008
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