Social Status, Inc. v. DNS Admin / Google Inc.
Claim Number: FA1801001767435
Complainant is Social Status, Inc. (“Complainant”), California, USA. Respondent is DNS Admin / Google Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <socialstatus.com>, registered with MarkMonitor 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 17, 2018; the Forum received payment on January 17, 2018.
On January 18, 2018, MarkMonitor Inc. confirmed by e-mail to the Forum that the <socialstatus.com> domain name is registered with MarkMonitor Inc. and that Respondent is the current registrant of the name. MarkMonitor Inc. has verified that Respondent is bound by the MarkMonitor 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 January 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2018 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@socialstatus.com. Also on January 29, 2018, 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 February 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant filed for a trademark registration of the SOCIAL STATUS mark with the United States Patent and Trademark Office (“USPTO”) (Serial No. 87-188,975, Filed Feb. 8, 2017). See Compl. Ex. 1. Respondent’s <socialstatus.com> domain name is identical to Complainant’s mark.
Respondent has no rights or legitimate interests in the <socialstatus.com> domain name as Respondent is not commonly known by the disputed domain name. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, as there is no active website associated with the domain name.
With respect to the issue of bad faith, Complainant submits that “(a)lthough the Respondent has not registered the domain name in bad faith, they are not utilizing the domain name with any bona fide offering of goods or services. The domain name is identical to the registered trademark filed by Social Status, Inc. with the US Patent and Trademark Office.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of building an industry-leading social media analytics platform for marketers and advertisers all around the world.
2. Complainant filed for trademark registration of the SOCIAL STATUS mark with the United States Patent and Trademark Office (“USPTO”) (Serial No. 87-188,975, Filed Feb. 8, 2017).
3. Respondent registered the <socialstatus.com> domain name on September 10, 2001.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant submits that it has filed for a trademark registration of the SOCIAL STATUS mark with the USPTO (Serial No. 87-188,975, Filed Feb. 8, 2017) and has adduced evidence to that effect. See Compl. Ex. 1. However, filing for a trademark registration is insufficient to confer rights in a mark for the purposes of Policy ¶ 4(a)(i). See Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (“The Panel finds that, in this specific case, the pending trademark application(s) of Complainant are insufficient to establish trademark rights.”). That is so because it is pivotal to the workings of the UDRP that a complainant must establish that it has a trademark or service mark on which it can rely in the proceeding. Moreover, the Policy provides that the complainant must establish that the disputed domain name is identical or confusingly similar to such a trademark or service mark.
It is of course open to Complainant to prove that it has a common law or unregistered trademark for SOCIAL STATUS. It is not necessary that the trademark should be registered and it is sufficient if it is a common law or unregistered trademark. It is particularly important in the present case that this be shown and that Complainant had such trademark rights for some time as the domain name was registered by Respondent in the year 2001. However, Complainant has not submitted that it has a common law or unregistered trademark and has not adduced any evidence to that effect.
In the absence of common law or unregistered trademark rights or a registered trademark, the Panel is obliged to find that Complainant has not established rights in the SOCIAL STATUS mark for the purposes of Policy ¶ 4(a)(i).
As the Panel has concluded that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark , the Panel will not proceed to analyze the other two elements of the Policy or make any comments on the case presented by Complainant on those issues. See 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); see also 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)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <socialstatus.com> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 28, 2018
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