Rajkumar Bakhru / Aponix Solutions LLC v. Domain Admin
Claim Number: FA1410001585036
Complainant is Aponix Solutions LLC (“Complainant”), represented by Rajkumar Bakhru of Aponix Solutions LLC, New York, USA. Respondent is Domain Admin (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aponix.com>, registered with Fabulous.com Pty Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2014; the National Arbitration Forum received payment on October 15, 2014.
On October 16, 2014, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <aponix.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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@aponix.com. 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 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
1. Complainant provides the Panel with a copy of its filing with the United States Patent and Trademark Office (“USPTO”) for the APONIX mark. See Complainant’s Annex B (Serial No. 86,257,124 filed April 20, 2014.)
2. Respondent registered the <aponix.com> domain name on July 24, 2007.
3. Respondent’s <aponix.com> domain name is identical to Complainant’s APONIX mark.
4. Respondent has no rights or legitimate interests in the <aponix.com> domain name.
a. Respondent registered the disputed domain name for the purpose of selling it via <sedo.com>. There is no evidence on the record, or otherwise, to demonstrate that Respondent has rights in the disputed domain name.
5. Respondent registered and is using the disputed domain name in bad faith.
a. Respondent is attempting to sell the disputed domain name for no less than $6,000 US dollars.
b. Respondent has demonstrated a pattern of selling domain names on <sedo.com>.
c. Respondent’s disputed domain name resolves to a website displaying only a solicitation to sell.
6. Respondent has neglected to submit a formal response, and Respondent’s correspondence is not in English.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Aponix Solutions LLC of Mount Vernon, NY, USA. Complainant filed an application to register the mark APONIX on April 20, 2014, for use as a service mark for technology consulting services.
Respondent is Domain Admin, of Gwangju, South Korea. Respondent’s registrar’s address is Queensland, Australia. Respondent registered the <aponix.com> domain name on or about July 24, 2007.
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.”).
The Panel notes that Complainant provided the Panel with a copy of its filing with the USPTO for the APONIX mark but Complainant does not hold a registration for the APONIX mark. Prior panels have held, however, that a complainant need not register a mark in order to have actionable rights in that mark. 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).
Panels have held that a complainant may assert rights in an unregistered mark if it can display evidence that its mark has taken on a secondary meaning. See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services). The Panel notes that Complainant does not allege common law rights in the APONIX mark. Complainant’s registration application indicates a first use date of December 14, 2013.
The Panel further notes that Respondent registered the <aponix.com> domain name on July 24, 2007, which is substantially before Complainant’s filing date of April, 2014. The Panel here finds that Complainant has not established rights in the APONIX mark under Policy ¶ 4(a)(i). See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness).
Because the Panel finds that 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)).
The Complainant has not proven this element.
Because of Complainant’s failure to prove the first element the Panel does not decide this element.
Because of Complainant’s failure to prove the first element the Panel does not decide this element.
Because the Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <aponix.com> domain name be shall remain with Respondent.
Darryl C. Wilson, Panelist
Dated: November 28, 2014
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