Axero Solutions, LLC v. Domain Admin / Ashantiplc Limited
Claim Number: FA1412001596783
Complainant is Axero Solutions, LLC (“Complainant”), represented by Lisa M. Martens of Fish & Richardson P.C., California, USA. Respondent is Domain Admin / Ashantiplc Limited (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <axero.com>, registered with Fabulous.com Pty Ltd.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Michael A. Albert, The Honourable Neil Anthony Brown QC, and Prof. Dr. Thomas Hoeren as Panelists. Michael A. Albert, presiding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2014; the National Arbitration Forum received payment on December 23, 2014.
On December 28, 2014, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <axero.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 December 30, 2014, the Forum sent Complainant a deficiency letter requiring Complainant to amend Respondent’s name and contact information to match the public whois record. Complainant timely amended its complaint to make the said correction.
On January 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015 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@axero.com. Also on January 5, 2015, 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 January 26, 2015.
On February 3, 2015, Complainant submitted a timely Additional Submission, and on February 9, 2015, Respondent submitted a timely Reply to Complainant’s Supplement. Both submissions have been considered by the Panel.
On February 10, 2015, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Michael A. Albert, The Honourable Neil Anthony Brown QC, and Prof. Dr. Thomas Hoeren as Panelists.
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 Axero Solutions, LLC (“Axero” or “Complainant”) alleges that it is a technology leader in the enterprise social collaboration marketplace, providing products, solutions, and resources for businesses to develop intra-company social networking platforms, which integrate social networking, collaboration tools, and knowledge-sharing into a secure online environment. Axero’s customers include some of the largest companies in the world, as well as startups, non-profits, and membership organizations.
Axero states, and provides evidence, that it adopted and began using and promoting its AXERO SOLUTIONS trade name and mark and its AXERO mark in connection with providing enterprise software and solutions in United States commerce in July 2008, and has used the marks continuously in commerce since then. Axero has invested a significant amount of time, money, and effort in the development and promotion of its AXERO and AXERO SOLUTIONS marks and related services, which it contends are fanciful and inherently distinctive, and represent valuable goodwill belonging exclusively to Axero, thus establishing valid common law rights in its marks.
Complainant contends that the domain name is identical to its Axero trademark.
Complainant contends that Respondent registered the <axero.com> domain name on November 19, 2013. In a footnote, Complainant acknowledges that the domain name “was originally created on December 10, 2004” but argues, based on an excerpt from the Domain Tools domain name report, that Respondent’s contact information did not appear as owner until a December 8, 2013 record which indicated a last modification date of November 19, 2013.
Complainant goes on to argue that Respondent must have known of Complainant’s trademark rights and usage by 2013, and that the sole use Respondent has made of the disputed domain name was to list it for sale with a statement that “All Offers below $10,000 USD will be discarded.” Accordingly, Complainant contends, Respondent has neither rights nor legitimate interests in the domain name and has registered and used it solely for the bad-faith purpose of selling it to the trademark owner for a sum considerably in excess of registration fees. Complainant further notes that Respondent did not respond to several cease-and-desist letters, and that Respondent’s use of a privacy registration service to conceal its identity is further evidence of bad faith. Finally, Complainant contends that it made a “serious offer” to purchase the domain name for $10,001 but that Respondent rejected the offer as “too low,” which Complainant contends is further evidence of Respondent’s bad-faith intent to seek to sell the domain name to the trademark owner for excess value.
B. Respondent
Respondent contends that this case is “a straightforward matter of priority.” It does not dispute that Complainant began use of the AXERO marks in 2008. Respondent contends, however, that it acquired the disputed domain name in 2005, and accordingly had legitimate rights to do so at the time and cannot have acted in bad faith inasmuch as Complainant admittedly did not even come into existence or use the marks in question until three years later.
Respondent further contends that the AXERO mark is not distinctive of the Complainant, which does not have a trademark registration. Respondent notes that a third party obtained a United States registration for that mark in 1998. Respondent also argues that Complainant has failed to show that it has used its alleged mark as indicative of the source of goods or services (as opposed to simply as the name of a company), and accordingly that it has failed to establish trademark rights at all.
Respondent goes on to contend that it does not use the domain name for goods or services competitive with those of Complainant.
As to the priority issue, Respondent argues that Complainant has failed to meet its burden of proof that Respondent did not own the domain until 2013. Respondent contends that the Domain Tools report cited by Complainant shows only that a change was made from “Domain Name Privacy LLC” to “WHOIS Privacy Services Pty Ltd” but that this was merely a change in privacy services, not in domain name ownership.
Lastly, Respondent reiterates that it cannot have acted in bad faith when registering a domain name in 2005 when Complainant did not acquire rights until 2008.
C. Additional Submissions
Complainant’s additional submission takes issue with Respondent’s suggestion that it registered the domain name in 2005 and argues that Respondent offers no evidence on this point but merely argument. Further, Complainant contends that, while it may bear the burden of proof on this issue, once Complainant has made a prima facie case on the issue, Respondent bears the burden of production of some evidence showing that it registered the domain name in 2005, and that it has failed to do so.
Complainant further argues that federal trademark registration is not a prerequisite to trademark ownership or rights, and that the evidence strongly supports its ownership of common-law trademark rights sufficient to give it standing to assert the claims made in the Complaint.
Complainant further reiterates its point that the offer for sale of the domain name for a sum greater than USD $10,000 is evidence of bad faith.
Respondent’s Reply to Complainant’s Additional Submission argues that, while common-law trademark rights can suffice, Complainant has failed to establish them here, inasmuch as it has not adduced evidence of any use of the marks in connection with the sale of goods or services.
As to the priority issue, Respondent adduces evidence in the form of records of correspondence establishing its ownership of the domain name dating back to 2005. Specifically, it attaches a renewal invoice dated 11 October 2005, notifying Respondent (by name) of the renewal deadline and amount due, as well as a transfer confirmation dated 17 November 2005 showing that Respondent decided to transfer the domain name to a new registrar, Fabulous.com. Respondent also attaches a confirmation letter from the new registrar and an invoice, dated 16 November 2005, showing that Respondent was billed for the transfer.
The Panel finds that Complainant has shown that the domain name is identical to a mark in which Complainant may well have rights, but has failed to show that Respondent lacks rights or legitimate interests in the domain name and registered and used it in bad faith.
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.
It is undisputed that the domain name is identical to the AXERO mark (but for the .com TLD which is routinely ignored for present purposes).
The parties hotly dispute whether Complainant has established rights in the AXERO mark. The Panel finds that registration is not necessary in order to establish trademark rights, inasmuch as it is well established that common-law rights suffice. See Manuel Gonzales v. AWRegistry.net, FA1012001364473 (Nat. Arb. Forum Feb. 8, 2011) (“[A] trademark registration is not necessary so long as [c]omplainant can establish common law rights through proof that its mark has gained secondary meaning.”); SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (noting that the Rules do not require that a complainant’s trademark or service mark to be registered by a government authority or agency in order for rights to exist). That said, Complainant bears the burden of proving that it has common-law trademark rights; and Respondent suggests that Complainant has failed to distinguish adequately between evidence that it has used the term AXERO as a corporate name from evidence of trademark use.
The Panel does not need to resolve the above dispute. Assuming for present purposes that Complainant has indeed established trademark rights dating back to 2008 (as it claims) will not alter the outcome for the reasons discussed below.
Whether Respondent has rights or legitimate interests in the domain name turns on whether it adopted a name in which Complainant already had established trademark rights or whether it picked an available name in which it could legitimately have sought to build rights of its own. In short, it turns on the priority question discussed above.
In debating the priority issue, the parties make various assertions regarding which party has the burden of proof and/or production. The Panel need not delve deeply into the details of that debate because, at least as of the parties’ Additional Submissions, which the Panel has accepted for consideration, the issue is reasonably clear: Respondent has provided adequate evidence that it did, in fact, register and own the domain name as of 2005. Accordingly, since Complainant undisputedly did not acquire its claimed rights until three years later, Respondent had legitimate rights and interests as of the time of its registration.
It may be suggested that, procedurally, Respondent failed to produce the above-described evidence at the appropriate time. In particular, the Complainant contended (and attached some arguable prima facie evidence) that Respondent did not register the domain name until 2013. The Response argued that the registration date was 2005, but did not come forward with clear supporting evidence at that time, a fact pointed out in Complainant’s timely Additional Submission. That problem, however, was rectified by Respondent’s timely Additional Submission. The question, then, is whether Respondent unfairly withheld the evidence from its Response in order to blindside Complainant with it. While troubled by the timing of Respondent’s production, the Panel finds that consideration of the late-submitted evidence is appropriate on the facts before us.
Respondent’s Additional Submission suggests that the deadline to respond left it with insufficient time to locate the necessary evidence. This argument alone is not impressive: Respondent neither suggested that it believed such evidence to exist, nor that it was diligently searching for such evidence, nor that it needed additional time to find it. Every proceeding must have some deadline and it cannot simply be ignored with impunity.
Respondent’s position survives, however, for a different reason. Respondent’s contention that it owned the domain name as of 2005 was clear from its Response (even though the back-up evidence was not produced at that time). While Complainant had put forward some evidence suggesting that the change in ownership occurred in 2013, that evidence was at best inconclusive and the Panel finds that the Response plausibly contended otherwise, and likewise supplied some plausible (albeit likewise inconclusive) analysis of the point. Accordingly, Complainant had not, as of that time, succeeded in making a prima facie case sufficient to shift the burden of proof onto Respondent. Moreover, Complainant was well aware, by then, of Respondent’s position, and had a full and fair opportunity in its Additional Submission to come forward with any evidence it might have suggesting that 2005 was not the actual transfer date. It came forward with no such evidence; and instead, Respondent came forward with evidence that seems to confirm that 2005 was indeed the date on which it became the owner of the domain name.
Accordingly, the panel finds that Respondent has legitimate rights and interests in the disputed domain name.
For the same reasons analyzed above with regard to the priority date, Complainant has failed to show bad faith. If Respondent owned the domain name since 2005 and any trademark rights owned by Complainant did not come into existence until 2008, Respondent plainly cannot have registered the domain name in bad faith.
Complainant having failed to establish the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <axero.com> domain name REMAIN WITH Respondent.
Michael A. Albert, Panel Chair
The Honourable Neil Anthony Brown QC, Panelist
Prof. Dr. Thomas Hoeren, Panelist
Dated: February 19, 2015
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