Baxx LLC v. Mike Rosiana
Claim Number: FA0703000948594
Complainant is Baxx LLC (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <baxx.com>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 28, 2007; the National Arbitration Forum received a hard copy of the Complaint April 5, 2007.
On March 30, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <baxx.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has 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 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 1, 2007, 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@baxx.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 6, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <baxx.com>, is identical to Complainant’s BAXX mark.
2. Respondent has no such rights to or legitimate interests in the <baxx.com> domain name.
3. Respondent registered and used the <baxx.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has filed a trademark application with the United States Patent and Trademark Office (“USPTO”) for the BAXX mark (Serial No. 78711,127). Complainant’s USPTO application states that the BAXX mark is for use in connection with computer programs for searching the contents of computers and computer networks by remote control, and for programs for off-site and remote backup.
Respondent registered the <baxx.com> domain name January 28, 1999. The disputed domain name is not currently connected with an active website.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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 provides
a copy of its USPTO trademark application, but does not offer any evidence of
common law rights in the BAXX mark. The
Panel finds that since Complainant does not yet have a USPTO registration for
its BAXX mark its argument for rights under Policy ¶ 4(a)(i)
cannot stand on registration of the mark alone.
See Wave Indus., Inc. v. Angler Supply, FA 304784
(Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s pending
trademark applications did not establish rights because “an application for [a]
mark is not per se sufficient to establish rights [in] a trademark for
the purposes of the [Policy].”); see also Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003)
(“Complainant’s pending trademark application does not in and of itself
demonstrate trademark rights in the mark applied for.”).
However, it is well
recognized under the Policy that common law rights are sufficient to establish
rights pursuant to Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO
Mar. 23, 2000) (noting that the Policy “does not distinguish between registered
and unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks.”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The
Policy does not require that a trademark be registered by a governmental
authority for such rights to exist.”).
However, it is equally well established that there must be some evidence
of secondary meaning in the mark in order to find common law rights. See Weatherford Int’l,
Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not
support a finding of common law rights in a mark in lieu of any supporting
evidence, statements or proof (e.g., business sales figures, revenues,
advertising expenditures, number of consumers served, trademark applications or
intent-to-use applications)); 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). Lacking any other evidence beyond the trademark
application, this Panel finds that Complainant has not demonstrated rights in
the BAXX mark as required pursuant to Policy ¶ 4(a)(i).
The Panel finds
that Complainant failed to satisfy Policy ¶ 4(a)(i).
Since the Panel finds that Complainant did not satisfy its Policy ¶ 4(a)(i) burden of demonstrating rights in the BAXX mark, the Panel does not address Policy ¶¶ 4(a)(ii) and (iii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 17, 2007.
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