Sports Traveler, LLC v. EFFROSYNI ZIKOULI / ZIKOULI EFFROSYNI
Claim Number: FA1805001785339
Complainant is Sports Traveler, LLC (“Complainant”), represented by Richard C. Balough of Balough Law Offices, LLC, Illinois, USA. Respondent is EFFROSYNI ZIKOULI / ZIKOULI EFFROSYNI (“Respondent”), Greece.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sportstraveler76.com> and <sportstraveler76.org>, registered with Papaki 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 7, 2018; the Forum received payment on May 7, 2018. The Complaint was received in English only.
On May 9, 2018, Papaki Ltd confirmed by e-mail to the Forum that the <sportstraveler76.com> and <sportstraveler76.org> domain names are registered with Papaki Ltd and that Respondent is the current registrant of the names. Papaki Ltd has verified that Respondent is bound by the Papaki 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 May 11, 2018 the Forum issued Complainant with a deficiency notice which, inter alia, required that the Complaint be translated into the Greek language.
On May 16, 2018 Complainant resubmitted the Complaint to the Forum in both English and Greek.
On May 18, 2018, the Forum served the Complaint in English and Greek and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2018 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@sportstraveler76.com and postmaster@sportstraveler76.org. Also on May 18, 2018, the Greek language 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 asserts trademark rights in SPORTS TRAVELER and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant markets and sells travel and sports packages by reference to the trademark SPORTS TRAVELER;
2. Complainant holds United States Patent and Trademark Office (“USPTO”) Reg. No. 2,809,578, registered January 27, 2004 for the trademark SPORTS TRAVELER;
3. the disputed domain names were created on November 8, 2017;
4. the domain name <sportstraveler76.com> redirects user to a website that directly competes with Complainant’s business under the trademark;
5. the domain name <sportstraveler76.org> is not in use; and
6. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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."
Preliminary procedural issue: language of the proceedings
The Panel notes that the Registration Agreement is written in Greek, thereby making Greek the language of the proceedings. As indicated, the Complainant was originally filed in English but later resubmitted in Greek and English. Copies of both were then served on Respondent. Complainant requests that these proceedings be conducted in English. In support of that request Complainant points out that one of the disputed domain names resolves to an English language website.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Greek language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English. In effect, the remainder of the process in this case is only the making of this decision. The decision will be rendered in English.
Primary Issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Complainant provides evidence of its registration of the trademark SPORTS TRAVELER with the USPTO. As a general rule, decisions under this Policy treat the registration of a trademark with a national authority as evidence of trademark rights. [i] However, a notable exception to this general rule is where the registration is made on the USPTO Supplemental Register. The Panel observes that Reg. No. 2,809,578 is on the Supplemental Register. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (‘the WIPO Overview”)[ii], asks at paragraph 1.2 “Do registered trademarks automatically confer standing to file a UDRP case?” in response to which the consensus viewpoint is that:
1.2.1 Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.
1.2.2 Complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights. Even where such standing is established, panels may scrutinize the degree of deference owed to such marks in assessing the second and third elements.
…
Therefore, contrary to Complainant’s assertion that the USPTO registration establishes trademark rights for the purposes of this first element of the Policy, in this case it does not. Thus, if Complainant is to show trademark rights it must prove the status of SPORTS TRAVELER as an unregistered or so-called common law trademark.
The evidence that might do so is found in and with the Affidavit of Anbritt Stengele made on May 4, 2018. It shows that Complainant was incorporated in Illinois in 2001. Reference is made to a website associated with Complainant’s business but there is no information as to its historical use and screenshots carry a 2018 copyright notice. Reference is made to advertising of the name SPORTS TRAVELER in various magazines and newspapers but there is no supporting evidence thereof. There are no annualized sales figures or details of promotional expenditure.
The WIPO Overview asks at paragraph 1.3: “What does a complainant need to show to successfully assert unregistered or common law trademark rights?” The consensus viewpoint of panelists includes the following statement:
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.
Here, the expression “sports traveler” is wholly descriptive, underscored by the fact that the trademark did not qualify for registration on the USPTO Principal Register. The evidence presented to the Panel is insufficient to prove unregistered trademark rights and so finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.
No findings required.
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sportstraveler76.com> and <sportstraveler76.org> domain names REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: June 18, 2018
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[ii] See http://www.wipo.int/amc/en/domains/search/overview3.0
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