Control Solutions, Inc. v. Chris Sorensen / Dickson
Claim Number: FA1507001627093
Complainant is Control Solutions, Inc. (“Complainant”), Oregon, USA. Respondent is Chris Sorensen / Dickson (“Respondent”), represented by Michael Unger, Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vfcdatalogger.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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2015; the Forum received payment on July 1, 2015.
On July 2, 2015, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <vfcdatalogger.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. 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 July 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 2015 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@vfcdatalogger.com. Also on July 8, 2015, 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 July 16, 2015.
On July 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts unregistered common law rights in the VFCDATALOGGERS.COM mark since at least 2009. The mark appears to be used in connection with the sale of data logging services. The Complainant asserts that the <vfcdatalogger.com> domain name is confusingly similar to the VFCDATALOGGERS.COM mark because the only difference between the domain name and mark is the removal of the letter “s.”
Complainant asserts that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, Respondent is using the domain name to misdirect Internet traffic.
Complainant further alleges that Respondent has engaged in bad faith registration and use. Respondent is, allegedly, using the domain name to sell competing products. Complainant asserts that Respondent is also typosquatting in bad faith.
B. Respondent
Respondent does not contend that the disputed domain name is not confusingly similar to the VFCDATALOGGERS.COM mark. Respondent does contend that it has rights that predate any rights Complainant might have in the VFCDATALOGGERS.COM mark. As such, the Respondent alleges, the Complainant lacks any legal claim to the trademark rights of the disputed domain name or mark.
Respondent claims it has rights or legitimate interests under Policy ¶ 4(c)(i) because it is making a bona fide offering of goods or services. Respondent’s VFC data logger product has been marketed extensively through tradeshows, catalogs, emails, literature, and websites.
Respondent claims it has not acted in bad faith because it has rights or legitimate interests, which preclude a finding of bad faith. Further, Respondent has made a bona fide offering of goods that correspond to the phrases “VFC” and “data logger” before Complainant filed for the domain name <vfcdataloggers.com>.
Therefore, the Respondent alleges, the Panel should make a finding of reverse domain name hijacking.
The Panel finds that although the disputed domain name is, obviously, very nearly identical to Complainant’s purported trademark, the Complainant has failed to establish rights in or to its purported trademark. As such, the Panel finds for the Respondent. As the Respondent points out, the disputed domain name consists of generic or descriptive terms in the data logging industry and, as such, cannot both, at the same time, be evidence of generic use and reverse domain name hijacking without further 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 asserts that it has had unregistered common law rights in the VFCDATALOGGERS.COM mark since at least 2009. The mark is alleged to be used in connection with the sale of data logging services. Although a specific registration with a governmental authority or agency is not necessary to establish rights in a trademark, Complainant has failed to show that it has common law rights in or to its purported trademark.
In order to establish common law rights, Complainant must show that the mark has acquired secondary meaning. 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.” See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). The Complainant has not submitted any evidence to establish that it has secondary meaning in its purported trademark. Thus, the Panel declines to award Complainant common law rights in the VFCDATALOGGERS.COM mark for purposes of Policy ¶ 4(a)(i).
As the Panel concludes 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 elements 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)).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <vfcdatalogger.com> domain name, of its rights to use the disputed domain name. Complainant purportedly registered its <vfcdataloggers.com> after learning that Respondent, the “industry leader,” was using the terms “VFC” and “data logger” in connection with its respective business offerings.
Reverse domain name hijacking also requires evidence. The mere and simple filing of a complaint under the Policy, is not sufficient, in and of itself, to establish reverse domain name hijacking if there is no other supporting evidence. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
Just like Complainant, the Respondent has not submitted sufficient evidence to support its claim.
Just because the that Complainant has failed to satisfy its burden under the Policy, does not automatically render a finding of reverse domain name hijacking by Complainant because it brought the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Although there is a plausible argument here that Complaint should have known of Respondents rights in or to the disputed domain name, the Respondent offers no evidence of Complaint’s actual knowledge. Just as constructive notice is not sufficient to show cybersquatting in the Complainant’s case in chief, it is also not sufficient to show reverse domain name hijacking here. In addition, Respondent attempts to use the alleged fact that the disputed domain name consists of generic words in its field of use to both forgive claims of cybersquatting and be evidence of reverse domain name hijacking at the same time. To claim both defies logic. If the disputed domain name is generic, it is generic for any purpose and anyone should have the right to use it. Without specific evidence of Complainant’s attempts to harass or intimidate Respondent using the disputed domain name in this circumstance, reverse domain name hijacking cannot be found. As such, the Respondent’s claim of reverse domain name hijacking is denied.
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 <vfcdatalogger.com> domain name remain with Respondent.
Kenneth L. Port, Panelist
Dated: July 27, 2015
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