Vantage West Credit Union v. Administration Dom / DI S.A.
Claim Number: FA1403001547313
Complainant is Vantage West Credit Union (“Complainant”), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P., Arizona, United States of America. Respondent is Administration Dom / DI S.A. (“Respondent”), represented by Paul Keating of Law.es, Barcelona, Reino de España.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vantagewest.com>, registered with EuroDNS S.A.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2014; the National Arbitration Forum received payment on March 6, 2014.
On March 9, 2014, EuroDNS S.A. confirmed by e-mail to the National Arbitration Forum that the <vantagewest.com> domain name is registered with EuroDNS S.A. and that Respondent is the current registrant of the name. EuroDNS S.A. has verified that Respondent is bound by the EuroDNS S.A. 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 March 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 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@vantagewest.com. Also on March 13, 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 April 1, 2014.
Complainant submitted an Additional Submission which was received and determined to be complete on May 9, 2009.
On April 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
COMPLAINANT'S CONTENTIONS
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered the <vantagewest.com> domain name on May 9, 2009.
RESPONDENT'S CONTENTIONS
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
COMPLAINANT'S ADDITIONAL SUBMISSION
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Complainant has claimed to have used the VANTAGE WEST mark since August 2006 to promote its banking and related services and filed for State of Arizona trademark recognition in August 2006. Apparently, Complainant has not registered its mark with the USPTO. Respondent registered the <vantagewest.com> domain name on May 9, 2009. Complainant offers no evidence that its mark had established a secondary meaning in the mind of the public and thus became a common law trademark as of the date of registration of the domain name at issue, or thereafter, for that matter.
Respondent’s <vantagewest.com> domain name is identical to the VANTAGE WEST mark. Respondent is not using the website associated with the domain name to offer goods or services which are conflicting or competing with those of Complainant.
This proceeding was brought nearly five years after the registration of the domain name at issue.
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."
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.
In its Complaint, Complainant has not furnished the Panel any of the requisite evidence to sustain a finding that Complainant’s mark has acquired secondary meaning in the eyes of the public. Evidence of a trademark registration with a single American state’s secretary of state is not enough. See, Combined Ins. Grp. Ltd v. iclicks c/o Michael Mayder, FA 1261538 (Nat. Arb. Forum Jun. 25, 2009): the panel found that a registration for a trademark with the Pennsylvania state trademark authority did not prove that the mark was well-known or distinctive. The panel goes on to note that without (or, in that case, prior) to federal registration of a mark there is no presumption of exclusive right to use a mark, thus the need to demonstrate distinction.
To prove up a common law trademark, Complainant must show that the phrase VANTAGE WEST has become so connected with Complainant’s goods that the general consuming public will think foremost of Complainant’s own business when they see VANTAGE WEST. Past panels have found that ownership of a registered trademark is not necessary for establishing rights under Policy ¶ 4(a)(i); Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel must determine whether Complainant has established common law rights, which past panels have found to be sufficient to meet the burden of establishing rights under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights require that Complainant’s mark has established a secondary meaning. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning). In The Gourmet Depot v. DI S.A. / Administration DomComplainant, FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel stated that evidence relevant to proving secondary meaning “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition."
In the instant case, the only proffer of evidence of use of the VANTAGE WEST mark in the Complaint is the State of Arizona registration. In the absence of a USPTO registration, an affidavit or declaration as to the nature and extensiveness of the use of the mark and facts establishing a secondary meaning of the mark would have been helpful. Even the Additional Submission material offered by Complainant fails to prove a common law trademark. Accordingly, the Panel finds that this evidence is not sufficient to establish a secondary meaning in the mind of the public and thus to confer common law rights in the Complainant’s VANTAGE WEST mark under Policy ¶ 4(a)(i).
As a practical matter, even if Complainant had proven common law trademark rights, there is no proof offered of Respondent's bad faith registration and use of the domain name at issue, and the requested transfer would have been denied by the Panel for that reason.
The Panel finds that Complainant has failed to establish secondary meaning in its mark and thus has failed under Policy ¶ 4(a)(i). 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); see also TallCat.com LLC v. [Registrant], FA 1537927 (Nat. Arb. Forum Feb. 9, 2014).
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel it declines as unnecessary the analysis of 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)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <vantagewest.com> domain name REMAIN WITH Respondent.
James A. Carmody, Esq., Panelist
Dated: April 15, 2014
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