Harmonia Rosales v. Giraldo Rosales / Nitrogen Labs, Inc.
Claim Number: FA2302002030851
Complainant is Harmonia Rosales (“Complainant”), represented by Lisa D. Johnson of Sheppard, Mullin, Richter & Hampton, LLP, Illinois, USA. Respondent is Giraldo Rosales / Nitrogen Labs, Inc. (“Respondent”), represented by Theodore J. Chiacchio of Chiacchio IP, LLC, Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harmoniarosales.com> and <harmonyrosales.com>, registered with Amazon Registrar, Inc.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Paul M. DeCicco, Jeffrey J. Neuman and Alan L. Limbury, as Panelists.
Complainant submitted a Complaint to Forum electronically on March 11, 2023. Forum received payment on March 11, 2023.
On March 15, 2023, Amazon Registrar, Inc. confirmed by e-mail to Forum that the <harmoniarosales.com> and <harmonyrosales.com> domain names are registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the names. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, 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”).
Complainant was notified by Forum on March 15, 2023 that the Complaint was deficient pursuant to UDRP Rule 4(d). Complainant submitted an Amended Complaint to Forum electronically on March 18, 2023.
On March 20, 2023, Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2023 by which Respondent could file a Response to the Amended Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@harmoniarosales.com, postmaster@harmonyrosales.com. Also on March 20, 2023, the Written Notice of the Amended Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post, 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 April 14, 2023.
On April 26, 2023, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Paul M. DeCicco, Jeffrey J. Neuman and Alan L. Limbury as Panelists.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: CONCURRENT COURT PROCEEDINGS
On March 22, 2023, Respondent requested that this proceeding be terminated or suspended due to pre-existing, pending litigation in the Circuit Court of Cook County, Illinois, filed on May 24, 2022 by Complainant and her business Harmonia Rosales, Inc., against Respondent and others, namely Harmonia Rosales et al. v. Nitrogen Labs, Inc. et al., Case No. 2022-CH-04989. That litigation relates to the domain name <harmoniarosales.com> and, according to Respondent, raises identical issues to those in this UDRP proceeding. Alternatively, Respondent requests that any necessary implementation of a decision by the Panel be deferred until resolution of the Illinois litigation.
Rule 18(a)provides:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
Because the concurrent litigation does not involve the domain name <harmonyrosales.com> the Panel will proceed to make a decision in this proceeding, noting that, as in W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008), it is not binding on the court and does not preclude the prosecution of any claims, defenses, or counterclaims in the litigation.
A. Complainant
Complainant has common law trademark rights in her name HARMONIA ROSALES, which she has associated in commerce with her image and artwork. She is a well-known artist who has been marketing, selling and displaying her artwork under this name/mark since 2012.
Complainant has used and/or intends to use the mark at issue and incorporated by the Respondent in the disputed domain(s) in the following areas: (i)Retail services by direct solicitation by sales agents in the field of works of art, namely, prints; (ii)Retail on-line ordering services featuring works of art, namely, prints also accessible by telephone, facsimile and mail order; (iii) Online retail store services featuring customized framed artwork consisting of namely prints; (iv) Retail store services featuring works of art, namely, prints; (v)Retail store services featuring works of art, namely, prints provided via downloadable mobile applications; (vi) Retail store services for works of art provided by art galleries; (vii) Mobile retail store services featuring works of art, namely, prints; (viii) On-line retail store services featuring downloadable mobile applications; (ix) On-line retail store services featuring works of art, namely, prints; and (x) Online retail store services in the field of downloadable mobile applications.
The <harmoniarosales.com> domain name is identical to the HARMONIA ROSALES mark and the <harmonyrosales.com> domain name is confusingly similar to that mark.
Respondent has no rights or legitimate interests in the <harmoniarosales.com> and <harmonyrosales.com> domain names, which Respondent registered and is using in bad faith.
In light of the Panel’s decision below, it is unnecessary to set out in detail Complainant’s contentions as to legitimacy and bad faith.
B. Respondent
Complainant cannot establish any of the elements required to make out a claim under the Policy.
As to the first element, under U.S. law, in order to obtain trademark rights to unregistered personal names, the party claiming such rights must establish that the name has acquired distinctiveness among consumers when used in connection with the subject goods or services. See, e.g., Abraham Zion Corp. v. Lebow, 761 F.2d 93, 104 (2d Cir. 1985) (“Personal names used as trademarks are generally regarded as descriptive terms, not arbitrary or fanciful terms; they are thus protected only if, through usage, they have acquired distinctiveness and secondary meaning”). While Complainant has filed a federal trademark application in the U.S. for HARMONIA ROSALES, that application remains pending. Here, Complainant has not even attempted to demonstrate acquired distinctiveness/secondary meaning of either HARMONIA ROSALES or HARMONY ROSALES. Accordingly, Complainant has not established that the <harmoniarosales.com> and <harmonyrosales.com> domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
In light of the Panel’s decision below, it is unnecessary to set out in detail Respondent’s contentions as to legitimacy and bad faith.
Complainant has failed to prove that she has rights in her name as a trademark or service mark.
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.
Ignoring the inconsequential gTLD “.com”, the <harmoniarosales.com> domain name is identical to Complainant’s personal name and the <harmonyrosales.com> domain name is identical to her nickname. However, the Panel is not satisfied that Complainant has shown that she has common law trademark rights in her name or nickname. A pending trademark application does not establish rights in a trademark.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 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 cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
Section 1.5 of the WIPO Jurisprudential Overview 3.0 states:
“1.5 Can a complainant show UDRP-relevant rights in a personal name?
1.5.1 Personal names that have been registered as trademarks would provide standing for a complainant to file a UDRP case.
1.5.2 The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.
Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint.”
Here Complainant makes broad, unsupported assertions that she has common law trademark rights in her name HARMONIA ROSALES. The assertion that she “has used and/or intends to use the mark” in numerous areas does not demonstrate any such use.
Complainant asserts that:
· she started her art career in 2012 painting simple classic portraits on commission and, from the start, posted her finished paintings online and began to establish an online presence and following;
· from 2017 she invested years of time and money directing her online and social media followers to her website at “www.harmoniarosales.com” and developing goodwill in the <harmoniarosales.com> domain name;
· her online business was earning more than $600,000 in 2021;
· by 2022 she had more than 212,000 followers on Instagram to whom she had marketed both her website and art directly rather than through a gallery and had over 20,000 subscribers to her website.
Complainant provides no evidence in support of these assertions.
Complainant exhibits a Wikipedia entry which describes her career and lists numerous art exhibits and collections. This does not establish that Complainant has common law trademark rights in her personal name.
Accordingly, in the absence of evidence to support her assertions, the Panel finds that Complainant has not proved that her personal name is a trademark or service mark in which she has rights.
Having regard to the Panel’s finding under the first element, it is unnecessary to consider these elements.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <harmoniarosales.com> and <harmonyrosales.com> domain names REMAIN WITH Respondent, without prejudice to Complainant filing a fresh Complaint with supporting evidence.
Alan L. Limbury (Chair)
Paul M. DeCicco
Jeffrey J. Neuman
Dated: May 3, 2023
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