TruSignal, LLC v. Xiaolan Zhang
Claim Number: FA1402001545378
Complainant is TruSignal, LLC (“Complainant”), represented by Stevan H. Lieberman of Greenberg & Lieberman, LLC, Washington D.C., USA. Respondent is Xiaolan Zhang (“Respondent”), represented by Haoran Zhang, Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trusignal.com>, registered with GoDaddy.com, LLC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2014; the National Arbitration Forum received payment on February 25, 2014.
On February 25, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <trusignal.com> domain name 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 February 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2014 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@trusignal.com. Also on February 27, 2014, 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 March 19, 2014.
On February 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
The Panel concludes that the relief is hereby denied.
The Complainant alleges a complicated scheme of various transfers of the disputed domain name <trusignal.com> and a conspiracy to cover the tracks of the actual owner of this registration. None of the allegations are relevant.
The Complainant used its trademark TRUSIGNAL on or in connection with online advertising targeting business from eBureau, a predictive analytics firm which targets the financial-services industry with analytics technology for fraud prevention and debt collection on January 10, 2012. The federal registration for this mark issued to Complainant on August 7, 2012.
However, the Respondent registered the domain name <trusignal.com> on June 16, 2012 before the Complainant’s registration issued.
Therefore, to prevail in this matter, the Complainant must allege and prove that its mark had attained secondary meaning prior to June 16, 2012.
Although the Complainant has offered many affidavits and other supporting documentation to prove its conspiracy theory, the record is devoid of evidence of secondary meaning. Therefore, this Panel can only conclude that the trademark TRUSIGNAL lacked secondary meaning on the date that <trusignal.com> was registered. As such, the Complainant’s relief is hereby denied.
Respondent’s trademark TRUSIGNAL is apparently well-known in the semiconductor industry in China. This mark was allegedly established in June of 2012 also prior to the issuance of the TRUSIGNAL registration. Respondent asserts that its trademark TRUSIGNAL also appears as the company logo on employee business cards of its distributors. See Respondent’s Exhibit B. Prior panels have held that a complainant has not established secondary meaning in a mark where there is minimal evidence to show that it has rights in the mark. See Mega Shoes, Inc. v. Ostrick, FA 1362894 (Nat. Arb. Forum Feb. 1, 2011) (finding the complainant’s unsworn assertion that it has been using the MEGA SHOES mark since 1994 failed to establish that complainant had acquired secondary meaning in the MEGA SHOES mark where there was very minimal evidence in the record to support this claim). This case is similar to the Mega Shoes Panel decision. There is even less evidence of record that the Complainant’s mark had gained secondary meaning by June of 2012. In fact, there is not even an unsworn claim that the mark had secondary meaning. The record is silent as to whether or not Complainant’s mark TRUSIGNAL ever attained secondary meaning prior to June, 16, 2012, the date the domain name <trusignal.com> was registered.
Therefore, the Panel determines that Complainant has no rights in the mark under Policy ¶ 4(a)(i). When the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark, the Panel may decline to analyze the other two elements of the Policy. 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 Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Therefore, as the Complainant has failed to establish that it had rights in or to the its trademark TRUSIGNAL on or before the date of the registration of the domain name <trusignal.com>, the relief is denied and this Panel declines to analyze the other two elements of the Policy
Having not established that Complainant has rights in or to the trademark at issue as required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly,
it is Ordered that the <trusignal.com> domain name remain with the
Respondent.
Kenneth L. Port, Panelist
Dated: April 9, 2014
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