Affordable
Kiosks, Inc. v. Glenn Richardson v. Affordable Kiosks, Inc.
Claim Numbers: FA0402000237518, FA0404000250745
PARTIES
Complainant in the first of two consolidated cases is Affordable Kiosks, Inc. (“Complainant”), represented by John Alumit, of Law Offices of Alex D. Patel, 20121 Ventura Blvd., Suite 302, Woodland Hills, CA 91364. Respondent is Glenn Richardson (“Respondent”), represented by Maria Crimi Speth, 3200 N. Central Ave., Suite 2000, Phoenix, AZ 85012.
Complainant in the second
consolidated case is Glenn Richardson (“Complainant”), represented by Maria
Crimi Speth, 3200 N. Central Ave., Suite 2000, Phoenix, AZ 85012. Respondent is Affordable Kiosks, Inc.
(“Respondent”), represented by John Alumit, of Law Offices of Alex D.
Patel, 20121 Ventura Blvd., Suite 302, Woodland Hills, CA 91364.
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue in the first case are <affordablekiosk.com>, <slabbkiosk.com>, and <slabbkiosks.com>, registered with Go Daddy Software, Inc. The domain name at issue in the second case is <affordablekiosks.com>, registered with Tucows Inc.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
P. Jay Hines, Honorable James A. Carmody and Honorable Bruce E. Meyerson, Esq. as Panelists.
PROCEDURAL HISTORY
Complainant Affordable Kiosks, Inc. submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 17, 2004; the Forum received a hard copy of the Complaint on February 23, 2004.
On February 18, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <affordablekiosk.com>, <slabbkiosk.com>, and <slabbkiosks.com> are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 2, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 22, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@affordablekiosk.com, postmaster@slabbkiosk.com, and postmaster@slabbkiosks.com by e-mail.
A timely Response was received and determined to be complete on March 22, 2004. Each party submitted additional submissions that have been taken into consideration. On April 1, 2004, the Respondent petitioned to consolidate Case No. 237518 with the second matter filed that same day.
On April 8, 2004, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed P. Jay Hines, Honorable James A. Carmody and Honorable Bruce E. Meyerson, Esq. as Panelists.
Complainant Glenn Richardson
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 1, 2004; the Forum received a hard copy of the
Complaint on April 6, 2004.
On April 2, 2004, Tucows Inc.
confirmed by e-mail to the Forum that the domain name <affordablekiosks.com>
is registered with Tucows Inc. and that the Respondent is the current registrant
of the name. Tucows Inc. has verified
that Respondent is bound by the Tucows Inc. registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On April 14, 2004, a
Notification of Complaint and Commencement of Administrative Proceeding
(the “Commencement Notification”),
setting a deadline of May 4, 2004 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@affordablekiosks.com by
e-mail.
A timely Response was received
and determined to be complete on April 27, 2004. Each party submitted an additional submission, Respondent’s being
untimely. Complainant also submitted a
second additional submission, also untimely.
Nonetheless, the Panel reviewed all materials.
On May 24, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed P. Jay Hines, Honorable James A. Carmody and Honorable Bruce E. Meyerson, Esq. as Panelists. On June 3, 2004, the Panel issued an Order granting the consolidation requested by Glenn Richardson.
RELIEF SOUGHT
Complainants request that the subject domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
The Complainant in each of the consolidated cases relies on common law use of its claimed marks. Affordable Kiosks, Inc. (Affordable Kiosks) relies on use of the mark AFFORDABLE KIOSKS with a claimed date of use of April 15, 2002. Likewise, Affordable Kiosks claims use of the marks SLABB and SLABB KIOSK since April 15, 2002. Complainant AFFORDABLE KIOSKS seeks transfer of the domain names <affordablekiosk.com>, <slabbkiosk.com> and <slabbkiosks.com>, registered on July 29, 2002.
Complainant Glenn Richardson relies on common law use of the marks CHEAP KIOSKS and THE LEADING SUPPLIER OF AFFORDABLE KIOSK SOLUTIONS with claimed dates of use of August 1, 2001 and February 15, 2002, respectively. Complainant Glenn Richardson seeks transfer of the domain name <affordablekiosks.com>, registered on March 28, 2002.
Each party has applied to register its claimed marks with the U.S. Patent and Trademark Office. Complainant Affordable Kiosks applied to register the mark AFFORDABLE KIOSKS in two classes of services on January 28, 2004 and the mark SLABB for goods on February 2, 2004. Complainant Glenn Richardson applied to register the marks CHEAP KIOSKS and THE LEADING SUPPLIER OF AFFORDABLE KIOSK SOLUTIONS each in two classes of services on March 12, 2004. None of the applications have been examined or approved.
Complainant Affordable Kiosks alleges that Respondent Glenn Richardson registered the domain names <affordablekiosk.com>, <slabbkiosk.com> and <slabbkiosks.com> to disrupt the business of a competitor and to divert Internet users to Respondent’s web site for commercial gain. Complainant Affordable Kiosks also alleges that Respondent Glenn Richardson offered to sell the domain name <affordablekiosk.com> for consideration in excess of out-of-pocket costs.
Respondent Glenn Richardson claims to be the senior user of the phrase “Affordable Kiosks” in his tagline and that Complainant’s use of AFFORDABLE KIOSKS infringes Respondent’s CHEAP KIOSKS mark. Respondent Glenn Richardson also alleges that the principal of Affordable Kiosks had an employment relationship with a South African company and, in fact, initially registered the domain name <affordablekiosk.com> in the name of that company, PC On The Go. Complainant Affordable Kiosks counters that the principal was an independent contractor who was free to conduct his own kiosk business in the United States under whatever name and domain he chose.
With respect to the domains <slabbkiosk.com> and <slabbkiosks.com>, Respondent Glenn Richardson claims that he registered the domains in preparation for future expansion. Complainant Affordable Kiosks alleges that Respondent Glenn Richardson was aware of Complainant’s common law use of the SLABB KIOSKS mark prior to registering the domain names.
In the consolidated case over the domain name <affordablekiosks.com>, Complainant Glenn Richardson alleges confusing similarity to his primary mark CHEAP KIOSKS and the slogan mark THE LEADING SUPPLIER OF AFFORDABLE KIOSKS. Complainant Glenn Richardson claims that Respondent Affordable Kiosks misappropriated the trademark after having discussions about possibly coming to work for Complainant Glenn Richardson. Complainant Glenn Richardson claims that the principal of Respondent Affordable Kiosks initially registered the subject domain as a representative of the South African company and later used his stale status as administrative contact to transfer the domain to Affordable Kiosks. Complainant Glenn Richardson notes that the previous employer intended to pursue civil and criminal action against the principal of Respondent Affordable Kiosks and that the previous employer has assigned its rights to the subject domain to Glenn Richardson.
Respondent Affordable Kiosks counters that there is no confusing similarity, that its principal was a contractor, not an employee, able to act independently in the United States. Respondent Affordable Kiosks claims that Complainant Glenn Richardson approached the prior employer with financial consideration in exchange for cooperating in affecting reverse domain name hijacking.
In each case, each of the parties submitted at least one additional submission, some of which were not timely. While the Panel has reviewed all of the submissions, due to its findings under Policy Paragraph 4(a)(i), the setting out of the additional contentions of the parties is unnecessary.
FINDINGS
The Panel finds that each of the Complainants in the consolidated cases has failed to establish the confusing similarity of the domain names to trademarks or service mark in which the Complainant has rights.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 principals of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the 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 names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names have been registered and are being used in bad faith.
The Panel is unanimous in its opinion that the marks AFFORDABLE KIOSKS, CHEAP KIOSKS and THE LEADING SUPPLIER OF AFFORDABLE KIOSK SOLUTIONS are descriptive designations that could, over time, acquire distinctiveness. However, based on the record before it, the Panel does not believe that either of the parties has provided sufficient evidence of acquired distinctiveness or secondary meaning sufficient to satisfy this first element. Pending applications in and of themselves do not establish rights in a mark. See Razorbox, Inc. v. Torben Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003); see also Amsec Ent. v. McCall, 2001-0083 (WIPO Apr. 3, 2001). The party’s pending applications for these marks may initially encounter refusals pursuant to Section 2(e)(1) of the Trademark Act, at which point the parties may submit evidence of acquired distinctiveness pursuant to Section 2(f) of the Trademark Act. However, due to the weak nature of the marks, the Panel is unable to conclude that either of the parties has established enforceable rights in its claimed marks. A mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning. Restatement (Third) of Unfair Competition §13, pp. 37-38.
With respect to the mark SLABB KIOSK of Complainant Affordable Kiosks, the Panel believes that the term “SLABB” may be inherently distinctive, but Complainant Affordable Kiosks has provided little evidence of the common law use and no dated evidence predating the date of registration of the subject domains. The UDRP has been consistently interpreted to require a Complainant to establish rights that predate Respondent’s registration of the disputed domain name. See OCZ Technology Group, Inc. v. Magazine Publications, FA 244094 (Nat. Arb. Forum Apr. 29, 2004) and cases cited therein. Reliance on a claimed date of use in a pending Federal application is insufficient. Thus, again the Panel does not believe that Complainant Affordable Kiosks has satisfied the first element of the Policy.
Having determined that the respective parties have not met their burden under Policy Paragraph 4(a)(i), the Panel need not address legitimate interests under Policy Paragraph 4(a)(ii) registration and use in bad faith under Policy Paragraph 4(a)(iii) or Complainant Affordable Kiosk’s claim of reverse domain name hijacking. However, the Panel notes that issues of employment relationships, fraud and conspiracy go beyond the narrowly defined domain name considerations of the Policy. See Commercial Publ’g Co. v. EarthComm., Inc., FA 95013 (Nat. Arb. Forum July 20, 2000); see also Latent Tech. Group v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000); see also Discover New England v. Avanti Group, Inc., FA 123886 (Nat. Arb. Forum Nov. 6, 2002).
DECISION
Having determined that the respective Complainants in the two consolidated cases have failed to sufficiently establish their rights in a confusingly similar mark as required under the ICANN Policy, the Panel concludes that relief to each is denied. Accordingly, the Panel declines to transfer any of the subject domain names.
P. Jay Hines, Presiding Panelist
Honorable James A. Carmody, Panelist
Honorable Bruce E.
Meyerson, Esq.
Dated: June 17, 2004
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