Consumer Education Info, Inc. dba Consumer Education Outreach v. Frances Kahn
Claim Number: FA1409001579351
Complainant is Consumer Education Info, Inc. dba Consumer Education Outreach (“Complainant”), represented by Mark N. Zanides, California, USA. Respondent is Frances Kahn (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <consumereducationoutreach.com> and <consumereducationoutreach.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on September 11, 2014; the National Arbitration Forum received payment on September 15, 2014.
On September 12, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <consumereducationoutreach.com> and <consumereducationoutreach.net> domain names are both 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 September 17, 2014, the National Arbitration Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2014, by which Respondent could file a Response to the Com-plaint, via e-mail message addressed to all entities and persons listed on Re-spondent’s registration as technical, administrative and billing contacts, and to the attention of postmaster@consumereducationoutreach.com, as well as to the attention of postmaster@consumereducationoutreach.net. Also on September 17, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 10, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant began using the mark CONSUMER EDUCATION OUTREACH in the operation of its telemarketing services business in January 2014.
The <consumereducationoutreach.com> and <consumereducationoutreach.net> domain names were registered by Respondent on May 27, 2014.
The domain names are substantively identical to Complainant’s CONSUMER EDUCATION OUTREACH mark.
Respondent has neither any rights to nor any legitimate interests in either of the domain names.
Respondent uses the domain names to criticize Complainant’s business.
The criticisms posted on the website resolving from the domain names are libelous and without any substantiating evidence.
Respondent has acted in bad faith in registering and using the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has failed to establish by sufficient proof that it has rights in the claimed mark CONSUMER EDUCATION OUTREACH which can be recognized under the Policy.
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 can-celled 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
It is customary in cases of this kind for a panel to analyze all three elements of Policy ¶ 4(a), i.e.: subsections (i), (ii) and (iii), in reaching a conclusion as to the validity of a complaint such as that presently before us. However, in order to merit a favorable decision on its claim as a whole, a UDRP complainant must demonstrate that it is entitled to prevail on each of the three branches of Policy ¶ 4(a). Therefore, where it becomes apparent that a complainant has failed to prove its entitlement to prevail as to any one of the three subparts of that section of the Policy, it is unnecessary to conduct an analysis of the others. See, for example, Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because a UDRP complainant must prove all three elements of Policy ¶ 4(a), its failure to prove any one of them makes inquiry into the remaining two unnecessary).
In this instance, we have examined the record on the point of Complainant’s as-sertion that it has rights in the claimed mark CONSUMER EDUCATION OUT-REACH. In so doing, we have discovered that Complainant makes no claim that the mark has been registered with any trademark authority, but instead relies exclusively upon a claim of common law rights in it. However, Complainant con-cedes that it did not begin using the mark until January of 2014. It also concedes that its corporate name is not the mark, but rather “Consumer Education Info, Inc.” It further concedes that its on-line operations are conducted at a website resolving from the domain name <consumereducation.net>. Moreover, the name CONSUMER EDUCATION OUTREACH is not inherently distinctive. For exam-ple, the California Department of Business Oversight operates an on-line service under the title “Consumer Education & Outreach.” In these circumstances, it is incumbent upon Complainant to demonstrate, by substantial evidence of the creation of “secondary meaning” in its business name, that it has established in the short period of its existence rights in the claimed mark which can be recog-nized under the Policy.
Ordinarily, secondary meaning arises where there is evidence that a party has used its claimed mark in such a way, and to such an extent, that a particular good or service is so related with it that the mark identifies the origin or source of that good or service in the marketplace, rather than merely that the phrase is a generic or descriptive indicator of the good or service. To meet this burden, Complainant must submit proof on a number of discrete points. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011):
Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.
Complainant’s submissions on these specific points are either woefully deficient or non-existent.
In these circumstances, we are forced to conclude that Complainant has failed to show that it has rights in the claimed CONSUMER EDUCATION OUTREACH mark sufficient to meet the requirements of Policy ¶ 4(a)(i).
It is therefore unnecessary for us to proceed to an examination of Complainant’s claims under the remaining subsections of Policy ¶ 4(a).
Complainant having failed to establish an essential element required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be DENIED.
Accordingly, it is Ordered that the <consumereducationoutreach.com> and <consumereducationoutreach.net> domain names REMAIN WITH Respondent.
Terry F. Peppard, Panelist
Dated: October 11, 2014
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