Lyatiss SAS société par actions simplifiée v. AspiraCon
Claim Number: FA1404001553812
Complainant is Lyatiss SAS société par actions simplifiée (“Complainant”), represented by Brian R. McGinley of Dentons US LLP, Missouri, USA. Respondent is AspiraCon (“Respondent”), Ireland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cloudweaver.com>, registered with Register.it S.p.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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2014; the National Arbitration Forum received payment on April 11, 2014.
On April 14, 2014, Register.it S.p.A. confirmed by e-mail to the National Arbitration Forum that the <cloudweaver.com> domain name is registered with Register.it S.p.A. and that Respondent is the current registrant of the name. Register.it S.p.A. has verified that Respondent is bound by the Register.it S.p.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 April 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 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@cloudweaver.com. Also on April 17, 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 May 7, 2014.
On May 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle 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.
A. Complainant
Complainant, Lyatiss SAS société par actions simplifiée, uses its CLOUDWEAVER mark in connection with computer software for application and database integration, computer software for administration of computer local area networks, computer software for computer system and application development, deployment and management, computer software for mapping network infrastructure resources, computer peripheral devices, etc.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CLOUDWEAVER mark (e.g., Reg. No. 4,248,566, registered November 27, 2012). Complainant used the CLOUDWEAVER mark in connection with its goods and services at least as early as April 27, 2011.
The <cloudweaver.com> domain name is identical to Complainant’s CLOUDWEAVER mark. Respondent has no rights or legitimate interests in respect of the disputed domain name, and Respondent has registered and is using the disputed domain name in bad faith.
B. Respondent
Complainant provides little to no evidence of a trademark right predating Respondent’s business activities.
Respondent has been using the CLOUDWEAVER name with customers, Enterprise Ireland, and potential customers from at least August 2011. Respondent registered the domain name on September 12, 2011. Complainant’s mark dates back only to September 16, 2011.
Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark.
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.
Respondent argues that Complainant provides little or no evidence of a trademark right predating Respondent’s business activities. The Panel agrees. Respondent registered the CLOUDWEAVER name with the Irish Companies Registrations Office under number 449,407 on September 21, 2011. The Panel also finds that Respondent acquired the disputed domain name in August 2011, following an open auction, obtaining registration days before Complainant’s USPTO application. Respondent claims that given its own use of the CLOUDWEAVER mark, Complainant has failed to show that its limited showing of rights entitle it to this domain name. The Panel finds that Complainant has not provided enough information to show that it has common law rights in the CLOUDWEAVER mark, and holds that Respondent’s rights in the <cloudweaver.com> domain name predate Complainant’s rights in the mark 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).
Since the Panel concludes that Complainant has failed to establish rights in the mark, the Panel declines 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)).
Respondent contends that the disputed domain name is comprised of common and generic terms and thus cannot be deemed identical to Complainant’s mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), it will not be addressed.
The Complainant not having established the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <cloudweaver.com> domain name REMAIN WITH Respondent.
Richard DiSalle, Panelist
Dated: May 21, 2014
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