SundaeSwap Labs, Inc. v. tech in
Claim Number: FA2108001959736
Complainant is SundaeSwap Labs, Inc. (“Complainant”), represented by Artyom Wright of SundaeSwap Labs, Inc., California, USA. Respondent is tech in (“Respondent”), Iceland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sundaeswap.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 16, 2021; the Forum received payment on August 16, 2021.
On August 17, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <sundaeswap.com> 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 August 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2021, 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 the attention of firstname.lastname@example.org. Also on August 18, 2021, 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 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is an online software application service provider for the cryptocurrency market.
Complainant has rights in the SUNDAESWAP mark based upon its pending application on file with the United States Patent and Trademark Office (“USPTO”) for trademark registration, and, as well, from its use of the mark in commerce since April 2021.
Respondent registered the domain name <sundaeswap.com> on or about April 30, 2021.
The domain name is substantively identical and confusingly similar to the SUNDAESWAP mark.
Respondent has not used the domain name in any legitimate way.
There is no possible legitimate use that Respondent could make of the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent registered the domain name with the intent to sell it or otherwise transfer ownership of it to Complainant or a competitor of Complainant.
Respondent both registered and now uses the domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant has failed to prove that it has rights in the mark upon which it relies sufficient to satisfy the standing requirements of Policy ¶ 4(a)(i).
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 to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Before we may proceed to examine Complainant’s contention that Respondent has registered and is using a domain name that is identical or confusingly similar to a trademark or service mark Complainant owns, we must be satisfied that Complainant has demonstrated that it has protectable rights in that mark. In so doing, Complainant may elect to show that rights in its claimed mark arise either from registration of the mark with a governmental trademark authority or that the mark has acquired “secondary meaning” in the marketplace so that it enjoys the protection of the common law. Complainant has failed to do either of these things.
With respect to whether Complainant can rely upon registration of its mark with a governmental trademark authority, it appears from the Complaint and accompanying papers that Complainant has filed an application with the USPTO seeking registration of its SUNDAESWAP mark, but that that application, which was evidently filed as recently as August 11, 2021, has not yet been approved. Accordingly, Complainant cannot rest its claim of standing to pursue its claim against Respondent’s domain name upon rights attendant to mark registration.
Perhaps appreciating this, Complainant appears also to claim that it has standing to proceed with its Complaint in this forum because it has used the SUNDAESWAP mark in commerce since April 1, 2021. However, a mere assertion of rights in a mark under the common law is not sufficient to satisfy the standing requirements of the Policy. Instead, Complainant must prove facts adequate to permit a finding that its mark has acquired secondary meaning in the marketplace. This it has not done.
A situation on all fours with this one was well explained in a decision of a panel in Avera eCare LLC v. Cyan Yo, FA1937991 (Forum April 26, 2021):
[I]n order to make a decision on this element of the Policy, the Panel must first determine whether Complainant has trademark rights in that name….
According to … [section]… 1.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”): “A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i).” Since Complainant’s trademark application is pending, the Panel finds that Complainant has not established that it has registered trademark rights at this time.
[On the point of rights to a mark under the common law,] Section 1.3 of the cited WIPO Jurisprudential Overview 3.0 states:
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
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….
Here, Complainant alleges that it has common law rights in the … mark based on use of the mark in commerce…, but does not provide any evidence showing when[,] specifically[,] it was used, nor the amount of sales under the mark, nor the nature and extent of advertising using the mark, nor the degree of actual public recognition of the mark…. Thus the Panel finds that Complainant has failed to satisfy its burden of proving that it acquired common law trademark rights, and it has failed to satisfy its burden of proving that the date on which such … rights may have been acquired predates the registration date of the disputed domain name. See Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, D2008-1036 (WIPO, Sept. 30, 2008); see also Thomas Pick aka Pick Inc. v. EUROPREMIUM LTD, Elaine Maria Gross, D2008-1010 (WIPO, Sept. 1, 2008).
Complainant having thus failed to show that it has standing to proceed in this forum under the terms of Policy ¶ 4(a)(i), we are precluded from addressing the question of identity or confusing similarity as between Respondent’s domain name and Complainant’s mark under that provision of the Policy.
A UDRP complainant has the burden to satisfy all three elements of Policy ¶ 4(a)(i)-(iii) in order to prevail on a complaint of impermissible cyber-squatting. Therefore, where, as here, a complainant fails to supply adequate proof as to any one of them, it is unnecessary for a panel to consider the remaining elements because to do so could not change the outcome. See, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum April 17, 2017) (finding that because a UDRP complainant must prove all three elements under the Policy, a complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary). See also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into a respondent’s rights or legitimate interests in a contested domain name or its registration and use of that domain name in bad faith where a UDRP complainant could not satisfy the proof requirements of Policy ¶ 4(a)(i)).
Complainant having failed to establish one of the elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the domain name <sundaeswap.com> remain with Respondent.
Terry F. Peppard, Panelist
Dated: September 14, 2021
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