Kyle Myers v. None
Claim Number: FA1112001421866
Complainant is Kyle Myers (“Complainant”), represented by Ryan C. Bernard of Braun Blaising McLaughlin, PC, California, USA. Respondent is None (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fpsrussia.com>, registered with Go Daddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2011; the National Arbitration Forum received payment on December 29, 2011.
On December 30, 2011, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <fpsrussia.com> domain name is registered with Go Daddy and that Respondent is the current registrant of the name. Go Daddy has verified that Respondent is bound by the Go Daddy 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 January 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2012 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 email@example.com. Also on January 9, 2012, 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.
A timely Response was received and determined to be complete on January 26, 2012.
On January 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
On January 31, 2012, Complainant submitted its Additional Submission. On February 4, 2012, Respondent submitted its Additional Submission. Both Additional Submissions were timely filed and therefore taken into consideration by the Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fpsrussia.com> domain name is identical to Complainant’s FPS Russia mark.
2. Respondent does not have any rights or legitimate interests in the <fpsrussia.com> domain name.
3. Respondent registered and used the <fpsrussia.com> domain name in bad faith.
B. Respondent makes the following assertions:
1. Complainant does not have rights in the FPS Russia mark.
2. Respondent has rights and legitimate interests in the <fpsrussia.com> domain name.
3. Respondent did not file the <fpsrussia.com> domain name in bad faith.
4. Complainant is attempting to reverse hijack the <fpsrussia.com> domain name.
C. Additional Submissions
1. In Complainant’s Additional Submission, it addresses Respondent’s registration and use of <fpsrussia.com>, fpsiraq.com, and fpsvietnam.com. Complainant states that it began using the “name” in April 2010 and, even if the USPTO finds that FPS Russia is descriptive, it can “easily show” that it has acquired secondary meaning. Regarding Respondent’s reverse hijacking claim, Complainant states that it had a plausible reason for filing its Complaint.
2. In Respondent’s Additional Submission, it primarily highlights its argument that it did not register the <fpsrussia.com> domain name in bad faith.
Complainant filed a trademark application for FPS Russia with the United States Patent and Trademark Office (USPTO) on October 26, 2011, and claims to have started using the mark in April of 2010. Complainant does not provide evidence of its commercial use.
Respondent registered the <fpsrussia.com> domain name on November 9, 2011, and filed for FPS Games, LLC on November 10, 2011. Respondent uses the disputed domain name to offer video games featuring “first-person-shooter” or “fps” perspective.
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.
Respondent asserts that Complainant has failed to submit any evidence that shows that it has rights in the FPS RUSSIA mark dating back to the alleged first-use date of April 19, 2011. The Panel agrees and finds that Complainant’s submissions are devoid of evidence to support its claims under this provision. Complainant simply states in its Complaint that it uses FPS RUSSIA for its YouTube username and points to its trademark application, dated October 26, 2011, roughly 2 weeks before Respondent registered the <fpsrussia.com> domain name and the FPS Games, LLC. Respondent also argues that “fps” and “Russia” are generic, and demonstrates that “fps” commonly refers to “first-person-shooter.” Although Complainant states that it can “easily show” the USPTO that its claimed mark FPS RUSSIA has acquired secondary meaning, it has not done so in this UDRP case. In fact, Complainant does not even allege common law rights in its Complaint. See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark).
Having failed to provide a trademark registration or any evidence of common law rights in the mark FPS Russia, Complainant has not satisfied the very first requirement under the Policy. It is not necessary for the Panel to make a determination as to whether FPS Russia is generic, whether Respondent has legitimate rights in the disputed domain name, or whether Respondent registered or used the disputed domain name in bad faith. However the Panel notes that Complainant does not even allege bad faith registration in its Complaint.
Reverse Domain Name Hijacking
The Panel notes that Respondent cites authority for reverse domain name hijacking which specifically relies on Complainant’s registration of its trademark after respondent’s registration of the disputed domain name. Here, Complainant’s application for registration of the FPS RUSSIA mark predates Respondent’s registration of the <fpsrussia.com> domain name, though barely. The Panel finds that Complainant had a plausible basis for filing the Complaint in this case, based upon its alleged YouTube use, and therefore declines to find reverse domain name hijacking. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”)
The Complainant having failed to establish the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <fpsrussia.com> domain name REMAIN with Respondent.
Sandra J. Franklin, Panelist
Dated: February 6, 2012
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