VibrAlign, Inc. v. Armando Martinez / Ludeca
Claim Number: FA1510001640543
Complainant is VibrAlign, Inc. (“Complainant”), Virginia, USA. Respondent is Armando Martinez / Ludeca (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is «alignmentblog.com», registered with GoDaddy.com, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Fernando Triana, Esq. as Chair of the Panel
Houston Putnam Lowry, Chartered Arbitrator, as Co-Panelist
David J. Steele, Esq. as Co-Panelist
Complainant submitted a Complaint to the Forum electronically on October 2, 2015; the Forum received payment on October 2, 2015.
On October 2, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the disputed domain name «alignmentblog.com» 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 October 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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 email@example.com. Also on October 9, 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 October 28, 2015.
On November 3, 2015, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the Forum appointed Fernando Triana, Esq. as Chair of the Panel, Houston Putnam Lowry, Chartered Arbitrator, and David J. Steele, Esq., as Panelists.
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 asserts trademark rights concerning the expression thealignmentblog.com, since November 11, 2009.
b. The trademark is used on or in connection with an online blog related to Complainant’s business of selling shaft alignment tools.
c. The disputed domain name «alignmentblog.com» is confusingly similar to “thealignmentblog.com” since the disputed domain name contains the entire trademark.
d. Respondent has no rights or legitimate interests.
e. Respondent is a competitor of Complainant and is using the disputed domain name to resolve to its own webpage.
f. Respondent’s only use of the disputed domain name is to confuse customers and prospective customers of VibrAlign, Inc.
g. Respondent has created a likelihood of confusion, from which it intends to profit, which consists of bad faith.
a. Complainant has failed to uphold its burden in establishing a trademark in which it has rights.
b. The disputed domain name «alignmentblog.com» is comprised of generic terms.
c. Respondent owns the domain name «alignment.com» since 1996.
d. Respondent has been engaged in the business of machinery alignment for over 33 years.
e. Respondent has rights or legitimate interests because it is using the disputed domain name in connection with a bona fide offering of goods or services.
f. Respondent has not acted in bad faith because Respondent has rights or legitimate interests in the disputed domain name.
g. Respondent registered the disputed domain name «alignmentblog.com» in good faith and for the purpose of describing the material content of the information published in its blog.
Complainant argues to have service mark rights from the operation of the domain name «thealignmentblog.com», since November 11, 2009; however, Complainant does not provide any evidence of such rights, either as a registered mark or as having acquired common law rights. Consequently, there is neither evidence of a service mark registration, evidence of secondary meaning nor evidence of use of the expression thealignmentblog.com as a mark. Thus, Complainant has not proven any rights regarding the mark thealignmentblog.com.
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 argues to have rights over the service mark thealignmentblog.com, since November 11, 2009.
a) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. Trademark or a service mark rights are only acquired by registration before the competent office in a number of jurisdictions throughout the world. However, in a number of common law jurisdictions, such as the United States of America, trademark or service mark rights may be acquired without registration based solely on use of the mark in commerce.
The worldwide-accepted definition of a trademark or service mark involves the concept of distinctive force as the most relevant element. Said force gives the mark the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a mark is registered, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered mark or any other mark confusingly similar to it in connection with goods and services of the type with respect to which the mark is registered.
However, the UDRP does not discriminate between registered and unregistered marks and thus, it is well established that a Complainant does not need to own a registered trademark to invoke the Policy.
In this case, Complainant argues to have had rights over the expression thealignmentblog.com. Since, no trademark or service mark registration was provided; Complainant’s alleged rights would be common law rights.
Common law rights are obtained with use of the mark to identify certain goods or services in commerce and to distinguish them from those of competitors. The common law rights may be established by extensive or continuous use sufficient to identify particular goods or services as those of the mark owner.
Hence, to prove common law rights, it is necessary to file evidence regarding the extensive and continuous use, enough to be considered sufficient by the Panel as to identify the goods or services specified by the mark owner.
The evidence filed must show that the mark has acquired secondary meaning, i.e., that the public associates the mark with Complainant’s services. The Panel considers relevant evidence of secondary meaning include the income produced by the mark (sales), the advertisement and media recognition. The mere registration of a domain name does not automatically create common law trademark or service mark rights.
However, there is no evidence of use as a mark, or secondary meaning of the expression thealignmentblog.com. After reviewing all the evidence provided by Complainant, the Panel only found the Exhibit D (image file of Complainant’s first use of “thealignmentblog.com” on November 11, 2009 (screenshot)) to the Complaint, which is the screenshot of the website thealignmentblog.com, from November 11, 2009, which by no means could be understood as use of a service mark.
Consequently, Complainant has not proven the secondary meaning or use of the expression thealignmentblog.com. Hence, Complainant has not established common law rights regarding the mark thealignmentblog.com.
Common law rights must be proven by strong and serious evidence of constant use and recognition from the objective customers of the goods or services. A simple argument based on a screenshot, is not enough to comply with the requirements of trademark recognition under the UDRP.
As trademark or service mark registrations, common law right must be seriously demonstrated, since under the Policy both recognition systems are enforceable as equals. Awarding common law rights to any expression to ultimately granting the same status of either a trademark or service mark without enough evidence, would be improper behavior of this Panel and also unfair with the systems where, unless a registration is obtained, no rights can be awarded even if the expression allegedly from which trademark or service mark rights are derived has been used for many years in a certain jurisdiction.
Moreover, the disputed domain name comprises two expressions that together make a description of a service. As per the Merriam Webster online dictionary, the word “alignment” means: “the act of aligning or state of being aligned; especially: the proper positioning or state of adjustment of parts (as of a mechanical or electronic device) in relation to each other”. On the other hand, “blog” means: “a Web site on which someone writes about personal opinions, activities, and experiences”. A descriptive term in one that directly and immediately convey some knowledge of the characteristics of a product or service. A mark is descriptive if it is descriptive of: the intended purpose, function or use of the goods; the size of the goods; the provider of the goods or services; the class of users of the good or services; or a desirable characteristic of the good or service. McCarthy, § 11:2 (citations to supporting cases omitted). A term which is categorized as “descriptive” cannot be protected as a mark unless secondary meaning is proven.
For the aforementioned reasons, the Panel concludes that Complainant has not demonstrated rights in the service mark thealignmentblog.com for purposes of Paragraph 4(a)(i) of the Policy, and that the expression alignment blog is merely descriptive for a blog of opinions, activities and experiences regarding alignment services.
Consequently, the element of the Policy paragraph 4(a)(i) has not been established in the present case.
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 disputed domain name «alignmentblog.com» REMAIN WITH Respondent.
Fernando Triana, Esq.
Chair of the Panel
Houston Putnam Lowry, Chartered Arbitrator
David J. Steele Esq.
Dated: November 13, 2015
 See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000).
 See Lilian Vachovsky, COO, Aplus.Net Internet Servs. v. A+ Hosting Inc., D2006-0703 (WIPO Oct. 26, 2006) (“Common law rights in a trademark derive from the use of the mark in commerce so as to distinguish the trademark owner’s goods or services from those of its competitors. See T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1372 (Fed.Cir. 1996). Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918)”).
 Inwood Laboratories, Inc. v. Ives Laboratories, Inc. 456 U.S. 844 (1982) (“To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a  term is to identify the source of the product rather than the product itself.”).
 See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum August 17, 2000).
 See Lilian Vachovsky, COO, Aplus.Net Internet Services v. A+ Hosting Inc., D2006-0703 (WIPO October 26, 2006).
 See Chandler Horsley v. Fundacion Private Whois / Domain Administrator. Claim Number: FA1305001497825 (Nat. Arb. Forum June 12, 2013).
 Merriam-Webster Online, alignment, (last visited November3, 2015), http://www.merriam-webster.com/dictionary/alignment.
 Merriam-Webster Online, blog, (last visited November3, 2015), http://www.merriam-webster.com/dictionary/blog.
 In re MBNA America Bank, N.A., 340 F. 3d 1328 (Fed. Cir 2003).
 Two Pesos, Inc. v. Taco Cabana, Inc. 505 U.S. 763, 120 L. Ed. 2d 615 (1992); see, generally, See McCarthy on Trademarks and Unfair Competition § 11:2.
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