Party Bus MN, LLC. v. Aleksey Silenko
Claim Number: FA1508001635320
Complainant is Party Bus MN, LLC. (“Complainant”), represented by Kyle T. Peterson of Patterson Thuente Pedersen, PA, Minnesota, USA. Respondent is Aleksey Silenko (“Respondent”), represented by Michael H. Frasier of Rubric Legal LLC, Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <952limobus.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2015; the Forum received payment on August 27, 2015.
On August 27, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <952limobus.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 August 31, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@952limobus.com. Also on August 31, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
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. The Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a formal response from Respondent. That said, the Panel notes that Respondent has informally submitted to the Forum material which has also been taken into account and which is discussed shortly hereunder.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in 952 LIMO BUS and alleges that the disputed domain name is confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
As indicated, Respondent failed to submit a formal Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark 952 LIMO BUS (“the trademark”) in respect of transportation services for weddings, clubbing, birthdays, proms, corporate events, concerts, and tours;
2. the trademark is the subject of United States Patent and Trademark Office ("USPTO") Reg. No. 4,749,961, filed on December 30, 2014 and registered on June 2, 2015;
3. the USPTO trademark registration carries a first use in commerce date of Dec. 31, 2004;
4. the disputed domain name was registered on May 16, 2011;
5. the disputed domain name resolves to a website which offers essentially the same services as those provided by Complainant; and
6. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
Preliminary Issue: Informal Response / Concurrent Court Proceedings
A formal Response was not filed but Respondent submitted two exhibits that show proceedings initiated against Complainant (and others) in the United States District Court for the District of Minnesota (“the Court proceedings”).
Panel is under no obligation to take those documents into account in reaching its decision but has, in this case, read and taken limited notice of certain claims contained therein in order to assess whether or not (i) Complainant filed the Complaint in good faith in terms of paragraph 3(b)(xi) of the Rules; (ii) the dispute is outside the scope of the Policy; (iii) Panel should suspend or terminate these Administrative Proceedings in consideration of the Court proceedings.
Rule 3(b)(xi) requires Complaint to include a statement (if true) that to the best of Complainant’s knowledge, information and belief, there have been no other legal proceedings that have been commenced or terminated in connection with or relating to the disputed domain name. Since the Complaint is dated August 28, 2015 and was sent to the Forum that day, and since the Court proceedings were filed on September 21, 2015, there is no reason to question the statement made in the Complaint.
Panels have frequently held that disputes which are principally of a contractual or business nature are outside the scope of the UDRP and so complaints have been refused for those reasons alone. Likewise, panels have treated complex trademark disputes as inappropriate for resolution under the Policy. Usually it has been a question of degree and decisions made on the particular facts.
Further, panels have in consideration of pending court action either suspended or terminated UDRP proceedings in circumstances where it was clear that the outcome of that court action would be determinative of the proper ownership of the domain name at issue.
Here the factors which have caused this Panel to find that it has a proper mandate to decide the matter are that (a) the Policy can be applied on the facts as they are now presented; (b) the Court proceedings were initiated less than two weeks ago and their eventual outcome may be many months away; (c) the Respondent in these Administrative Proceedings is not a party to the Court Proceedings; and (d) the stated cause of action in the Court proceedings, namely, “fraudulent trademark registration; willful trademark infringement”, would not, even if successfully prosecuted by the named plaintiff, directly or immediately determine the ownership of the disputed domain name.
Accordingly, Panel proceeds to apply the Policy.
Primary Issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – an investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Registration of a trademark with a national trademark authority is generally regarded as prima facie proof of trademark rights (see, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006). Exceptions exist and although Complainant provides evidence of its USPTO registration for the trademark Panel observes that the registration is only on USPTO’s Supplemental Register. The consensus view of UDRP panelists is that registration on this Supplemental Register is insufficient proof of trademark rights (see CyberTrader, Inc. v. Bushell, D2001-1019 (WIPO Oct. 30, 2001) stating that Supplemental Register “provides the Complainant with no protectable rights” in its marks; see also Chiappetta v. Morales, D2002-1103 (WIPO Jan. 20, 2003) holding that the complainant’s registration of the DISCOUNT HYDROPONICS mark on the Supplemental Register did not confer any rights under the UDRP).
Furthermore, although Complainant asserts common law rights in the trademark by reason of use since 2004 there is nothing of any substance to support that claim (see Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“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.”).
Panel finds that Complainant has not shown that it has trademark rights and so has failed to establish the first element of the Policy.
No findings required.
No findings required.
Debrett G. Lyons, Panelist
Dated: October 6, 2015
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