Federal and State Tax Negotiators v.
WebQuest.com inc. c/o Chad Wright
Claim Number: FA0504000465129
PARTIES
Complainant
is Federal and State Tax Negotiators (“Complainant”),
represented by Pete McCollough, of Pagoda Corporation,
400 Lakeside Ave S., Suite #315, Seattle, WA 98144. Respondent is WebQuest.com
Inc. c/o Chad Wright (“Respondent”),
represented by David M. Dingeman, Esq.,
550 Trees Drive, Cedar Hill, TX 75104.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <fstn.com>,
registered with Moniker Online Services,
Inc.
PANEL
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.
David
P. Miranda, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
19, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 21, 2005.
On
April 22, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <fstn.com> is registered with Moniker Online Services, Inc.
and that the Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified
that Respondent is bound by the Moniker Online Services, 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 27, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 17,
2005 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@fstn.com by e-mail.
A
timely Response was received and determined to be complete on May 17, 2005.
Complainant’s
additional submission of May 23, 2005, and Respondent's additional submission
of June 6, 2005, were received and considered.
On May 24, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David P. Miranda as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant,
Federal and State Tax Negotiators ("Complainant"), provides tax
consulting and resolution services for businesses and individuals in all fifty
states and has operated continuously since 1999. It alleges that it is "in the process of applying" for
a federal trademark for the initials FSTN.
It contends that it maintains a website at <fstn.org> and expends
advertising dollars in excess of $50,000 a month for the purposes of driving
traffic to its website. Complainant
further contends that Chad Wright, doing business as Webquest.com
("Respondent"), has registered the <fstn.com> domain
name for the purpose of using the website to link to other companies providing
similar services to those provided by FSTN.
Complainant contends that Webquest.com is the owner of many sites
designed to mislead people into clicking links that they have contracted to
display.
B.
Respondent
Respondent
contends that it is a business providing search engines related to generic
domain names. Respondent contends that
Complainant is operating under the name Federal and State Tax Negotiators, and
the acronym "FSTN" in question is not used as an identifier of a
source of services by Complainant.
Respondent registered <fstn.com> on June 6, 2001, prior to
Complainant applying for their U.S. Service Mark in March 2005. Respondent points out that Complainant has
failed to provide evidence that its services are available for businesses and
individuals in all fifty states as alleged in its Complaint. Respondent also notes that Complainant
failed to provide evidence of use of FSTN as a service mark, or proof of
advertising as alleged in the Complaint.
Respondent claims legitimate common law service mark rights for FSTN.COM
dating back to June 6, 2001 based upon a cached page from Google®. Respondent claims that it operates a search
engine for personal finances, while Complainant allegedly provides tax relief
and tax solutions for businesses and individuals addressing different consumer
groups, and Complainant has failed to provide any evidence of actual or
possible consumer confusion. Respondent
notes that Complainant's trademark does not provide a date of first use in
commerce for the mark in question.
C.
Additional Submissions
Complainant
submits additional submissions showing that it has been in the business of
providing tax dispute and resolution services to individuals and corporations
since October 24, 2001. Complainant
provides receipts for both mailing of literature and marketing materials, which
average $250 a day.
Complainant has used the acronym FSTN in
conjunction with the name of its company Federal and State Tax Negotiators,
Inc. and on its website. Complainant
has failed to show sufficient trademark or service mark rights to warrant
transfer under the UDRP Rules.
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 principles 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
name registered by the Respondent is 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 name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant contends that its business, Federal and State
Tax Negotiators, has been operating continuously in business since 1999. However, Complainant fails to establish the
length of time that the acronym FSTN has been in use with respect to its goods
or services. Complainant contends that
it filed a federal trademark application for FSTN for tax negotiation and
consulting. Complainant fails to
provide a copy of that application or the status of that application. Respondent disputes Complainant's claims and
submits a printout from the United States Patent and Trademark Office's
trademark electronic search system that shows Complainant's application for
FSTN was filed under 1(b) status as an "intent to use" mark dated
March 18, 2005. The application does
not show a date of a first use in commerce.
The mark by Complainant is an intent to use application and merely shows
the applicant's intent to use the mark at some future time. No proof has been submitted showing a
trademark or service mark registration by any governmental authority.
Although generally trademark or service
mark rights are established by showing that the mark is registered by a
government authority or agency, common law rights may be acquired through a
showing of secondary meaning associated with the mark and the complainant. See S.A. Bendheim Co., Inc. v. Hollander
Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003). In the absence of
registration of the mark, Complainant must establish common law trademark
rights by demonstrating sufficiently strong identification of its mark by the
public, showing the mark has acquired secondary meaning. Complainant has failed to satisfy its burden
of providing proof upon which a finding of secondary meaning could be
based. Although a complainant in a
proceeding such as this may establish common law rights to a mark, Complainant
in this case has failed to do so. See,
e.g., NBA Props., Inc. v. Adirondack Software Corp., D2000-1211 (WIPO
Dec. 8, 2000) (denying the complaint because the complainant was not the owner
of the trademarks); see also Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003)
(finding that the complainant did not establish the requisite trademark or common
law rights to grant the complainant the necessary standing for the panel
to find in its favor as the complainant’s pending trademark application did
not, in and of itself, demonstrate trademark rights in the mark); see also Diversified Mortgage, Inc. v. World Fin.
Partners, FA 118308
(Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that its
“rules are intended only to protect trademarks, registered or common law, and
not mere trade names, due to the fact that trade names are not universally
protected as are trademarks”); see also Tees.com, LLC v. Emphasys Techs.,
Inc., FA 206362 (Nat. Arb. Forum, Dec. 27, 2003); see also
Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11,
2001) (finding that the complainant failed to prove trademark rights at common
law because it did not prove the CYBERIMPRINTS.COM mark was used to identify
the source or sponsorship of goods or services or that there was strong
customer identification of the mark as indicating the source of such goods or
services); see also Molecular Nutrition, Inc. v. Network News and Publ’ns.,
FA 156715 (Nat. Arb. Forum June 24, 2003) (approving of and applying the
principals outlined in prior decisions that recognized “common law” trademark
rights as appropriate for protection under the Policy “if the complainant can
establish that it has done business using the name in question in a sufficient
manner to cause a secondary meaning identifiable to Complainant's goods or
services”).
Thus, Complainant has failed to establish
Policy ¶4(a)(i).
Since Complainant has failed to establish
the first element of the Policy, it is unnecessary to address the claims under
the remaining two elements. 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 Holmes v.
Whois Prot. Serv., FA288395 (Nat. Arb. Forum, Aug. 17, 2004).
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief is DENIED.
Accordingly, it is Ordered that the <fstn.com>
domain name remain with Respondent.
David P. Miranda, Esq., Panelist
Dated: June 6, 2005