Paul Steciuk, Northeast Power Systems, Inc. v. ADRIENNE BUSKARD, MERCURY WEB SOLUTIONS
Claim Number: FA1311001529834
Complainant is Paul Steciuk, Northeast Power Systems, Inc. (“Complainant”), represented by Paul Steciuk, New York, USA. Respondent is ADRIENNE BUSKARD, MERCURY WEB SOLUTIONS (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nepsi.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2013; the National Arbitration Forum received payment on November 14, 2013.
On November 14, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <nepsi.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 November 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@nepsi.com. Also on November 15, 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 December 10, 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. 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 asserts trademark rights in NEPSI and alleges that the disputed domain name is identical to its trademark.
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 manufacturers specialized electrical apparatus.
2. Complainant has not provided evidence of any trademark registration.
3. The disputed domain name was registered on April 9, 1998.
4. Complainant has not provided evidence of how the disputed domain name is used, if it is used at all.
The Panel finds it useful to make further comments of the Complaint pertinent to the decision in this case:
1. Complainant has not provided evidence of any trademark registration.
2. Complainant asserts that it once owned the domain name.
3. Complainant has not provided evidence of how the disputed domain name is now used, if it is used at all.
4. Complainant states at one point that there has not been a relationship between the parties at any point but at another that it had engaged Respondent for web hosting services.
5. On December 11, 2012, after Panel had been appointed, Respondent wrote to the Forum Respondent outlining in brief its frustrated attempts to transfer the domain name to Complainant.
6. There is no explanation in Complaint as to why these Administrative Proceedings were brought more than 15 years after registration of the domain name.
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.
Complainant carries an obligation to do so notwithstanding that there was no Response. Nonetheless, Respondent’s informal email communication to the Forum (and the evidence therein of its earlier email contact with Complainant offering to transfer the domain name to Complainant) require Panel to first consider whether this is a so-called “Consent to Transfer” case where it would be inappropriate for Panel to apply the Policy.
A great many UDRP decisions have already considered the circumstances under which it is appropriate for a panel to give effect to the parties’ acceptance of voluntary transfer of a disputed domain name in reaction to a UDRP complaint and so forego a UDRP analysis and decision. Those decisions do not need to be cited again here. It is sufficient to note that the consensus of those cases has settled on minimum prerequisites. These include (i) that the offer to transfer is unconditional, and (ii) that the parties, together, agree on the transfer. Neither of those conditions is met here. The evidence before the Panel is that Complainant was silent on the offer. Moreover, the offer to transfer communication from Respondent to Complainant refers to an invoice already sent to Complainant to meet hosting charges.
Panel goes on to apply the Policy.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Although a trademark registered with a national authority is evidence of trademark rights it is open, equally, to Complainant to show unregistered or common law trademark rights acquired through use and reputation of the trademark.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, 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 former 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.
Complainant makes no direct claim to common law trademark rights. It addresses paragraph 4(a)(i) of the Policy only by reference to a catalogue of its products and services, corporate documentation, and corporate partners. Annexed to the Complaint is a copy of its Certificate of Incorporation with the State of New York filed January 5, 1995. Also annexed is a copy of its by-laws, dated February 7, 1995. Neither of these documents refers to the asserted trademark. It is clear from what has been set out earlier that this is no evidence of common law trademark rights in NEPSI and Panel can give it no weight.
Panel finds that Complainant has not shown that it has unregistered trademark rights in NEPSI and so has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.
No findings required
No findings required.
Having failed to establish at least one of the three elements required to be shown under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <nepsi.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: December 14, 2013
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