ValueVapor LLC v. Vicki Oxman
Claim Number: FA1402001542157
Complainant is ValueVapor LLC (“Complainant”), represented by Christopher S. Johns of Johns Marrs Ellis & Hodge LLP, Texas, USA. Respondent is Vicki Oxman (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vickisvaluevapor.com>, registered with Volusion, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 4, 2014; the National Arbitration Forum received payment on February 4, 2014.
On February 7, 2014, Volusion, Inc. confirmed by e-mail to the National Arbitration Forum that the <vickisvaluevapor.com> domain name is registered with Volusion, Inc. and that Respondent is the current registrant of the name. Volusion, Inc. has verified that Respondent is bound by the Volusion, 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 February 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2014 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 firstname.lastname@example.org. Also on February 12, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
Panel notes here that on February 16, 2014, Respondent wrote to the Forum stating that “I am working with Value Vapors attorney in this case. I agreed to change my company name. … Thank you, Vicki Oxman”. Nothing more was received from the parties by way of a request to suspend the Administrative Proceedings and so Panel can attach no procedural value to that communication and proceeds to its decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts trademark rights in the term VALUEVAPOR and alleges that the disputed domain name is confusingly similar to the asserted 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.
Respondent failed to submit a formal Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant claims to use the term VALUEVAPOR in connection with the sale of smoker’s requisites;
2. The disputed domain name was registered on May 2, 2012.
3. Complainant filed a trademark registration with the United States Patent and Trademark Office for registration of VALUEVAPOR on October 28, 2013.
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.
Even though Respondent provided no response to the Complaint and is in default, Complainant must still prove on the balance of probabilities the three elements of paragraph 4(a) of the Policy set out above.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold 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.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
There is no evidence of a registered trademark and it has long been held that a pending application for registration is not sufficient to prove trademark rights (see Ascentive, LLC v. jiang lixin, FA 1413756 (Nat. Arb. Forum Dec. 7, 2011) finding that trademark application “does not sufficiently establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”).
Nevertheless, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights (see Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). In that respect, Complainant contends that it has continuously used the name VALUEVAPOR in commerce since 2009.
Unregistered or so-called “common law” trade mark rights arise through use and reputation if there is adequate proof of secondary meaning. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition asks at paragraph 1.7: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” In answer, the consensus view of UDRP panelists is that:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required …”
The Complaint makes no attempt to provide evidence of use of the term VALUE VAPOR. Panel observes that Complainant’s pending trademark application before the USPTO makes a first use in commerce claim from November 2009 but no value can attach to that claim since the credibility of the claim is tested by the USPTO as part of the registration process which is incomplete.
As the evidence of record stands, there is no possible room for a finding of trademark rights and so Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.
No findings required (see Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) 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).
No findings required.
Having failed to establish one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <vickisvaluevapor.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: March 20, 2014
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