DECISION

 

Auradine, Inc. v. trre ger

Claim Number: FA2503002146830

 

PARTIES

Complainant is Auradine, Inc. ("Complainant"), represented by Todd Marabella of Goodwin Procter LLP, Massachusetts, USA. Respondent is trre ger ("Respondent"), Hawaii, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <auradine-miner.com>, registered with Hello Internet Corp.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 25, 2025; Forum received payment on March 25, 2025.

 

On March 28, 2025, Hello Internet Corp confirmed by e-mail to Forum that the <auradine-miner.com> domain name is registered with Hello Internet Corp and that Respondent is the current registrant of the name. Hello Internet Corp has verified that Respondent is bound by the Hello Internet Corp 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 April 2, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2025 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@auradine-miner.com. Also on April 2, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On April 23, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in AURADINE and submits that the 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

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The only pertinent factual finding is that on May 31, 2023, Complainant filed a trademark application for AURADINE with the United States Patent & Trademark Office ("USPTO"), now identified by Serial No. 98021468 ("Application"), which at the time of this Decision is not registered.

  

DISCUSSION

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.

  

Identical and/or Confusingly Similar

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.

 

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview") describes proof of trademark rights as a "threshold requirement" of the Policy (¶ 1.2.1). It states that paragraph 4(a)(i) of the Policy comprehends registered and unregistered (common law) marks (¶ 1.1.1).

 

In this case Complainant asserts both registered and unregistered trademark rights in AURADINE. The Complaint states that:

 

"Auradine's federal trademark application for AURADINE, which has been issued a Notice of Allowance, is sufficient to establish Auradine's rights in this distinctive trademark under ICANN Rule ¶ 4(a)(i). (citations omitted but considered later)

 

In addition to Auradine's approved pending application, Auradine has acquired common law rights in the name AURADINE through its long use of the name, and by investing substantial sums in developing the mark. As a result of these efforts, the AURADINE Trademark benefits from a high degree of consumer recognition and distinctiveness."

 

It is universally established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003); WIPO Overview ¶ 1.2.1). Complainant's submission is that the Application should be treated as registered because the USPTO has issued a so-called Notice of Allowance.

 

The USPTO website explains that:

 

"[a] notice of allowance is an official notification from the USPTO that a specific trademark has made it through the 30-day opposition period following publication in the Trademark Official Gazette, and has consequently been allowed. Receiving a notice of allowance is another step on the way to registration, but it doesn't mean the trademark has registered yet." 

 

The website goes on to explain that notices of allowance are only issued for applications that have a filing basis of "intent to use" the trademark. A compliant Statement of Use must be filed within six months from the date of the Notice of Allowance, or within a previously granted extension of time to file that Statement of Use.  If a compliant Statement of Use is not received, the application will be treated as having been abandoned.

 

The Notice of Allowance of the Application issued on July 30, 2024. The initial six-month period passed and extensions of time have been sought to file the Statement of Use.

 

It is clear from the USPTO website that the Application is not yet registered and that the USPTO does not treat it as registered. The question is whether this Panel should treat the Application otherwise.

 

The two cases cited by Complainant, Love City Brewing Company v. Anker Fog/Love City Brewing Company, FA1710001753144 (Forum  Nov. 17, 2017) ("Love City") and Royal Caribbean Cruises Ltd. v. Gold Anchor Serv., D2003-0443 (WIPO July 17, 2003) ("Royal Caribbean"), similarly concerned applications pending before the USPTO as the purported basis for trademark rights. In Love City, the panelist found that "once the allowance of approval is rendered [complainant's] trademark right may be considered as dating back to the filing date. The Approved and Allowed application will be sufficient to establish its trademark right with the USPTO."   In Royal Caribbean, the panelist stated that "[m]ere lodgment of a trademark application may not be enough to establish trademark rights in some cases but here, where the application has been allowed and the mark has been used for at least some months, such rights are established."  

 

The decisions do not offer compelling counterargument; that rights backdate to the time of filing (Love City) is uncontroversial, but irrelevant, as is use for some months (Royal Caribbean) which might be read instead – the decision is unclear - as bearing on some common law right. 

 

Having regard to the plain wording of the WIPO Overview, the countless UDRP cases which informed it, the USPTO's own practice statements and, above all, the foundation tenets of trademark registration systems, the Panel finds that "registered" means just that, registered.

 

The Panel finds that Complaint has not shown registered trademark rights in AURADINE but, as explained above, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights and UDRP panels have found that a governmental registration is not required so long as a complainant can establish common law rights (see, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017)).

 

The WIPO Overview poses the question at ¶ 1.3 :

 

What does a complainant need to show to successfully assert unregistered or common law trademark rights?

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. …

 

In this regard the Complaint makes the following claims:

 

"Officially founded in 2022, Auradine is a provider of web infrastructure solutions for blockchain, security, and privacy. …  Since its founding, Auradine has established widespread consumer recognition and loyalty in the AURADINE Trademark and Auradine's associated goods and services through its expenditure of significant resources and marketing efforts. As a result of these efforts, Auradine has developed substantial goodwill, consumer recognition and distinctiveness in the AURADINE name. Auradine has actively promoted its services by using the AURADINE Trademark since at least as early as 2022."

 

There is no support for any of those conclusory assertions. As such, the Complaint falls far short of the evidentiary requirements laid out in the WIPO Overview and the Panel is thus unable to find common law trademark rights.

 

The Panel therefore finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

No findings required (see, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) 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; Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) 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)).

 

Registration and Use in Bad Faith

No findings required.

 

DECISION

Having not established one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <auradine-miner.com> domain name REMAIN WITH Respondent.

 

 

 

Debrett G. Lyons, Panelist

Dated: April 25, 2025