Xyngular Corporation v. Darren Little
Claim Number: FA1402001544847
Complainant is Xyngular Corporation (“Complainant”), represented by Brett D. Ekins of Jones Waldo Holbrook & McDonough P.C., Utah, USA. Respondent is Darren Little (“Respondent”), British Columbia, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xyngularcorporation.com>, <xyngulartaiwan.com>, and <xyngloseweightnow.com>, registered with GoDaddy.Com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
ROBERT T. PFEUFFER, Senior District Judge, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2014; the National Arbitration Forum received payment on February 21, 2014.
On February 21, 2014, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <xyngularcorporation.com>, <xyngulartaiwan.com>, and <xyngloseweightnow.com> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. 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 February 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2014 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@xyngularcorporation.com, postmaster@xyngulartaiwan.com, and postmaster@xyngloseweightnow.com. Also on February 24, 2014, 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 March 17, 2014.
On March 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed ROBERT T. PFEUFFER,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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Policy ¶ 4(a)(i)
A. Complainant
B. Respondent
Respondent makes no contention in this regard.
Policy ¶ 4(a)(ii)
A. Complainant
B. Respondent.
Policy ¶ 4(a)(iii)
A. Complainant
.
B. Respondent
Complainant has not discharged it’s BURDEN OF PROOF.
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 relies upon an affidavit from its President to support its claim of common law rights. The panel finds that Respondent has used the XYNGULAR mark since December 1, 2009, and that the XYNGULAR mark has acquired secondary meaning dating back to December 1, 2009. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Thus the Panel finds that Respondent’s common law rights under Policy ¶ 4(a)(i) date back to December 1, 2009. The Panel notes that Respondent does not hold trademark registration for the XYNG mark, yet the Panel agrees that registration is not a requisite under the Policy. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent claims that he does have rights to use these disputed domain names. Respondent explains that he is an entrepreneur and Internet-oriented business person. Respondent has helped develop many online businesses including Bingo.com, which reached a market cap of around $100 million during Respondent’s tenure as CEO. Respondent claims that he was a key affiliate of Complainant from December 2009 to April 2012 and did a lot of legwork to promote Complainant’s brand through the Internet, syndication, and radio/print media. Respondent claims that Complainant’s officers congratulated Respondent for registering these domain names, and thus Respondent relied on Complainant’s apparent approval of the trademark use. Respondent notes that it vinyl wrapped his own automobile to help sell the brand. Respondent points out that Complainant was underfunded during its startup, and thus Respondent had to incur substantial personal costs to help get the XYNGULAR and XYNG brands “off the ground.” Respondent’s relationship with Complainant ceased when he was informed that Complainant’s leaders were in a takeover struggle and that Complainant’s key partners were beginning corporate litigation over the company. Complainant’s officials advised Respondent that it was best he cease his marketing efforts during the litigation. The Panel agrees that Respondent’s course of conduct in expending personal finances to establish the brand provides evidence as to Respondent’s Policy ¶ 4(a)(ii) rights in the domain names. See Educ. Directories Unlimited v. Reflex Publ’g, Inc., FA 142378 (Nat. Arb. Forum Mar. 26, 2003) (finding that the respondent was making a bona fide use of the domain name as the complainant had a business relationship with the respondent, where the respondent was part of its affiliate program and the complainant sought jointly to exploit the domain name for commercial gains).
Registration and Use in Bad Faith
The Panel finds that Respondent has not registered or used the domain names in bad faith as it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent claims that any content on the domain name’s website occurred through the actions of an Indian domain name operator who is hired by Respondent. Respondent did not know or have any notice that the domain names were being used in a competitive fashion until Complainant informed Respondent of such activity. In Elec. Arts. Inc. v. Abstract Holdings Int’l LTD, FA 1415905 (Nat. Arb. Forum Jan. 4, 2012) the panel found that Respondent did not act in bad faith when it was clear that the websites were never intentionally used in a competitive or unfair manner, but instead the content was managed by a parking service. Here, the Panel finds that Respondent’s close involvement with Complainant, as evidenced by the record, suggests that Respondent did not intend for the domain names to be used in a competitive manner and thus the parking servicer’s conduct should not be traced to Respondent for purposes of Policy ¶ 4(a)(iii).
Respondent further states that it registered the domain names with Complainant’s blessing and used them to promote Complainant’s business. The Panel agrees that the facts of the case suggest that Respondent registered these domain names having received Complainant’s approval, and as such it is imprudent to hold that Respondent registered any of the domain names in Policy ¶ 4(a)(iii) bad faith. See, e.g., Eddy’s (Nottingham) Ltd v. Smith, D2000-0789 (WIPO Sept. 7, 2000) (finding no bad faith registration of the domain name where the respondent registered the domain name in good faith, without objection by the complainant, and in the interest of promoting the complainant’s business).
Having NOT established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <xyngularcorporation.com>, <xyngulartaiwan.com>, and <xyngloseweightnow.com> domain names remain
WITH Respondent.
ROBERT T. PFEUFFER, Panelist
Dated: April 11, 2014
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