i.g. Burton & Co., Inc. v. Peg Creonte
Claim Number: FA1906001846913
Complainant is i.g. Burton & Co., Inc. ("Complainant"), represented by John Cannon, Delaware, USA. Respondent is Peg Creonte ("Respondent"), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <igburton.group>, registered with NameCheap, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2019; the Forum received payment on June 7, 2019.
On June 10, 2019, NameCheap, Inc. confirmed by email to the Forum that the <igburton.group> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@igburton.group. Also on June 13, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 July 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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. Therefore, the Panel may issue 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it has sold and serviced automobiles since 1908, and that its company name i.g. Burton is widely recognized in the Mid-Atlantic region of the United States. Complainant owns <igburton.com> and many other domain names incorporating its name.
Respondent registered the disputed domain name <igburton.group> in June 2018. Complainant states that Respondent has been using the disputed domain name to impersonate Complainant and one of its employees in emails for fraudulent purposes.
Complainant contends on the above grounds that the disputed domain name <igburton.group> is confusingly similar to a mark in which it has rights; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the Complainant has not proved that it has rights in a relevant 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Complainant has not made a claim of trademark rights in a specific mark, either by virtue of a registration or at common law. Even if the Panel infers that Complainant is asserting trademark rights in its company name -- i.g. Burton & Co., Inc., or just i.g. Burton -- it does not appear that either of these is a registered trademark in the United States. Furthermore, Complainant has offered no evidence that its name has acquired secondary meaning, aside from the general and unsubstantiated assertions in the Complaint itself. ("Our company, i.g. Burton has been selling and servicing automobiles since 1908 and is a 5th generation family business. Our company name is widely recognized in the Mid-Atlantic region of the east coast of the United States as a premier automotive group." Compl. at 3.)
Although a trademark registration is not required to prevail under the Policy, a complainant's burden is fairly steep if its claimed rights arise solely at common law. The claimed mark must have been used as to identify the source of goods or services, and as a result of such use, must have become distinctive of that source.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. . . .
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3; see also, e.g., Michal Menert v. Garmon Dafydd, FA 1841388 (Forum June 3, 2019).
Complainant has offered no evidence of fame or public recognition (via consumer surveys, media recognition, or otherwise), sales volumes, or advertising expenditures, and the general and unsubstantiated claims in the Complaint are insufficient to demonstrate trademark rights for purposes of paragraph 4(a)(i) of the Policy. Accordingly, the Panel finds that Complainant has failed to meet its burden of showing rights in a relevant mark for purposes of paragraph 4(a)(i).
As the Panel's finding with regard to the first element is dispositive, the Panel declines to address the other elements required under the Policy.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <igburton.group> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: July 8, 2019
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