Accelerator For Humanitarian Projects v. John Higgins / J3 Communications
Claim Number: FA1410001584646
Complainant is Accelerator For Humanitarian Projects (“Complainant”), represented by Joshua R. Furman of Joshua R. Furman Law Corp., California, USA. Respondent is John Higgins / J3 Communications (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gwob.org> and <geekswithoutbounds.org>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2014; the National Arbitration Forum received payment on October 13, 2014.
On October 14, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <gwob.org> and <geekswithoutbounds.org> 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 October 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 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@gwob.org, postmaster@geekswithoutbounds.org. Also on October 20, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant holds pending United States Patent and Trademark Office (“USPTO”) applications for the GWOB and GEEKS WITHOUT BOUNDS marks.
2. Respondent’s <gwob.org> and <geekswithoutbounds.org> domain names are identical to Complainant’s marks.
3. Respondent has no rights or legitimate interests in the <gwob.org> and <geekswithoutbounds.org> domain names.
a. Respondent entered into an Assignment of Trademark Rights & Goodwill on June 1, 2012, which effectively assigned any and all interest in the marks to Complainant.
4. Respondent registered and is using the <gwob.org> and <geekswithoutbounds.org> domain names in bad faith.
a. Respondent’s actions indicate a pattern of bad faith conduct.
b. Respondent’s disputed domain names disrupt website traffic and e-mail communications directly related to Complainant’s business. Respondent’s use redirected internet users, privileged communications, and other confidential communications to unauthorized sources.
c. Respondent’s use of the disputed domain names constitutes a material breach of the assignment.
d. Respondent sent a threatening e-mail to all members of Complainant’s management team allegedly in response to Complainant’s request for Respondent to resign.
B. Respondent
1. Respondent was asked to resign from Complainant’s Advisory Board due to personal misconduct on August 19, 2014.
2. Respondent registered the <gwob.org> domain name on October 4, 2002 and the <geekswithoutbounds.org> domain names on September 26, 2010.
3. The WHOIS information for the disputed domain names lists “John Higgins” as registrant.
Complainant failed to establish that it had rights in the mark contained in the disputed domain names.
Complainant has not satisfied Policy ¶ 4(a)(i), and thus the Panel declines to analyze the other two elements of 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 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 contends that it holds pending USPTO applications for the GWOB and GEEKS WITHOUT BOUNDS marks. The panel notes Complainant’s Annex to see that Complainant holds a pending trademark application for the GEEKS WITHOUT BOUNDS mark with the USPTO (Serial No. 86,366,143 first use in commerce January 1, 2011 filed August 13, 2014). Additionally, the Panel sees that Complainant holds a pending registration for the GWOB mark with the USPTO. See (Serial No. 86,366,150 first use in commerce January 1, 2011 filed August 13, 2014.). The Panel notes that the disputed domain names were registered by Respondent prior to Complainant’s first use of the GEEKS WITHOUT BOUNDS and GWOB marks. See WHOIS information citing the <gwob.org> domain name registration date on October 4, 2002 and the <geekswithoutbounds.org> domain name registration date on September 26, 2010.
The Panel considers that prior panels have concluded that it is not necessary to hold a registration for a trademark in order to have rights in it. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist). Prior panels have held that the relevant date to establish rights in a mark may date back to the filing date for the mark. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
However, the Panel here declines to find that Complainant owns trademark rights in the disputed domain names because the disputed domain name registrations predate even the date of first use of the Complainant’s mark as well as the date of filing of the applications for the marks.
Prior panel analysis has also determined that where there is no registration for a mark or where the respondent’s rights in a mark predate complainant’s rights, complainant may show that it has common law rights in the mark by providing evidence of secondary meaning. The panel in Cybertania, Inc. v. Right Mobile, Inc. Domain Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) concluded that a complainant had acquired secondary meaning sufficient to establish common law rights in a mark pursuant to Policy ¶ 4(a)(i) where the complainant had invested “enormous resources” in promoting the goods and services available under the complainant’s mark. In the present case, the Panel also notes that Complainant has not given evidence alleging that Complainant has achieved a secondary meaning in the mark.
The Panel concludes that Complainant has not provided sufficient evidence to establish rights in the GWOB and GEEKS WITHOUT BOUNDS marks under Policy ¶ 4(a)(i), based on its first use and filing dates with the USPTO as well as Complainant’s failure to submit further information regarding secondary meaning.
As Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
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 <gwob.org> and <geekswithoutbounds.org> domain names REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: November 25, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page