NetProtect, Inc. v. UZAIR GADIT / GZ SYSTEMS LIMITED
Claim Number: FA1508001634154
Complainant is NetProtect, Inc. (“Complainant”), represented by Paul J. Famiglietti of Knobbe, Martens, Olson & Bear, LLP, California, USA. Respondent is UZAIR GADIT / GZ SYSTEMS LIMITED (“Respondent”), represented by Carl Rohsler of Squire Patton Boggs (UK) LLP, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <unblock.com>, registered with eNom, Inc.
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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 19, 2015; the Forum received payment on August 19, 2015.
On August 20, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <unblock.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 August 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@unblock.com. Also on August 21, 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 September 9, 2015.
Complainant submitted a timely Additional Submission, which was received and determined to be complete on September 14, 2015.
Respondent submitted a timely Additional Submission, which was received and determined to be complete on September 17, 2015.
On September 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Calvin A. Hamilton as Panelist.
On October 5, 2015, the Panel extended the time period to render its Decision to October 13, 2015.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts unregistered common law rights in the UNBLOCK-US trademark. The mark is used on or in connection with a line of virtual private network (VPN), proxy, and domain name services. The <unblock.com> domain name is confusingly similar to the UNBLOCK-US mark because the domain name contains the entire mark and differs only by the omission of the “-US” portion of the mark and the addition of the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a webpage that Respondent is using to run a competing business.
Respondent has engaged in bad faith registration and use. Respondent is disrupting Complainant’s business by running a competing business. Respondent is also attempting to commercially profit from a likelihood of confusion.
B. Respondent
Complainant has not provided sufficient evidence to show that the UNBLOCK-US mark has acquired secondary meaning. The <unblock.com> domain name is not confusingly similar to the UNBLOCK-US mark because the “-US” portion of the mark distinguishes the former from the latter.
Respondent has rights or legitimate interests. Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Also, the domain name is comprised of a generic term over which Complainant does not have a monopoly.
Respondent has not engaged in bad faith registration or use. Respondent is using the domain name in connection with a legitimate business that it has been running for a number of years. Additionally, the domain name was chosen because of the appeal it has to consumers in the market that Respondent is targeting with its business. Also, the domain name is comprised of a generic term, therefore Respondent could not have acted in bad faith.
C. Additional Submissions
Complainant’s Additional Submission
Complainant asserts that there is no publicly available evidence regarding the business Respondent alleges it runs. Also, Complainant claims that there is no evidence to indicate that Respondent operates a business under the name “UNBLOCK.”
Respondent’s Additional Submission
Respondent reasserts its contention that it is using the domain name in connection with a legitimate business. Additionally, Respondent reasserts contentions made in its initial response.
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.
Complainant asserts unregistered common law rights in the UNBLOCK-US trademark and that the mark is used on, or in connection with, a line of virtual private network (VPN), proxy, and domain name services. The Panel notes that registration with a governing authority or entity is not required to acquire rights in a mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
However, in order to acquire rights in an unregistered trademark, Complainant must show that the mark has acquired secondary meaning. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (holding that in order to acquire a common law trademark, the complainant must show that the mark has acquired secondary meaning).
In support of its claim for secondary meaning, Complainant has submitted screenshots of its website (see Compl., at Attached Ex. 6), screenshots of online forums discussing the services offered under the UNBLOCK-US mark (see Compl., at Attached Ex. 7), as well as screenshots displaying Complainant’s efforts at marketing the UNBLOCK-US mark on social media website such as Facebook (see Compl., at Attached Ex. 8), or Twitter (see Compl., at Attached Ex. 9).
Respondent argues that Complainant has not carried the burden of proof in proving common law rights in the UNBLOCK-US trademark. Respondent argues that the evidence Complainant has submitted regarding secondary meaning is insufficient because Complainant has not provided a date to which its alleged rights trace. Respondent also claims that the evidence does not show that consumers associate the mark with Complainant.
Relevant evidence of secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011).
Complainant has not put forward any evidence of sales of its services under, or by reference to, the UNBLOCK-US name, or any figures for commercial advertising. This evidence would be necessary to show that the UNBLOCK-US name functions as a trademark. “Simply operating under a business name does not, per se, constitute secondary source identification sufficient to warrant a finding of common law rights in the WELLSERV mark. Complainant’s burden requires proffering supportive evidence or information that indicates relevant customers identify its alleged WELLSERV mark as representative of its services and identity” See Weatherford International v Paul Wells, FA 153626 (Nat. Arb. Forum May 19, 2003).
Respondent refers to paragraphs 1.6 and 1.7 of WIPO’s “Overview of Panel Views on selected UDRP Questions”:
paragraph 1.6:
“the name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trade mark rights for the purpose of the UDRP. Merely having a famous name… or making broad unsupported assertions regarding use of such name in trade or commerce would not necessarily be sufficient to show unregistered trade mark rights”.
paragraph 1.7:
“The Complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services… Some panels have noted that in cases involving claimed common law or unregistered trade mark rights that are comprised of a descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness”.
Complainant has not provided this Panel with compelling evidence of secondary meaning or distinctiveness. This evidence is particularly relevant where, as in this case, Complainant asserts common law rights in a trade mark that comprises of a descriptive word. Please see the Panel’s discussion on the descriptiveness of the term ‘unblocked’ below.
Complainant argues that the <unblock.com> domain name is confusingly similar to the UNBLOCK-US mark. Complainant notes that the domain name contains the entire mark and differs only by the omission of the “-US” portion of the mark and the addition of the gTLD “.com.”
Respondent argues that the Domain is a simple dictionary word (“unblock”), not a made up or fanciful title. Respondent stresses that it acquired the domain through an agency which advertises and sells “premium” domains, listed under its list of available “dictionary words”. A screen shot showing the website from which the Domain was purchased appears at Appendix 3 of Respondent’s submissions.
Respondent explains that when an Internet user seeks to download certain content which is geo-blocked, (s)he will often receive a notice to the effect that “the service that you are trying to obtain is blocked”. Respondent continues that this may be as a result of government censorship or control of servers or for other reasons. Further, that when this happens, many users will search for tools to “unblock” that content. Respondent concludes that having a domain name which reflects that common descriptive search term will generate business.
The Panel notes that Complainant itself uses the term “unblock” on its website in a manner which is entirely descriptive of its services and not distinctive. This can be gleaned from the opening text on Complainant’s home page which reads: “Unblock Everything on Netflix, Spotify, Hulu and more”. In this phrase, the word “unblock” is used to describe a method of “unblocking” access to the Internet.
The Panel agrees with Respondent that the domain name is a simple dictionary word. The Panel appreciates that Respondent uses the word ‘unblocked’ as a common descriptive search term. Further, that Complainant also uses the term ‘unblocked’ on its web site in a manner which is entirely descriptive.
Additionally, providers of VPN and DNS services also use domains containing the term “unblock” to attract users. Appendix 4 contains examples of such businesses,including:www.unblockanything.com;www.unblocknetflix.co.uk;www.unblockvpn.com; www.tvunblock.com and www.unblockaustralia.com. The significance of this, is that Complainant cannot be understood to have the exclusive on the use of the ‘unblocked’ term, but rather, its use must be appreciated as descriptive of an element of the services of VPN or smart DNS providers.
Accordingly, the Panel finds that Complainant has not established common law rights 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).
Additionally, the Panel finds that the term ‘unblocked’ is descriptive of an element of the services of VPN or smart DNS and as a result cannot be said to be confusingly similar to the UNBLOCK-US mark for purposes of Policy ¶ 4(a)(i).
In light of the fact that Complainant has not satisfied Policy ¶ 4(a)(i), 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)).
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 <unblock.com> domain name REMAIN WITH Respondent.
Calvin A. Hamilton, Panelist
Dated: October 13, 2015
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