Quanta Services, Inc. v. Lisa Jaques
Claim Number: FA2005001896897
Complainant is Quanta Services, Inc. (“Complainant”), represented by Aditi Nayar, Texas, USA. Respondent is Lisa Jaques (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jwdldado.com>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2020; the Forum received payment on May 19, 2020.
On May 20, 2020, Google LLC confirmed by e-mail to the Forum that the <jwdldado.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC 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 May 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 2020 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@jwdldado.com. Also on May 20, 2020, 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.
Respondent failed to submit a Response in this proceeding. Having received no response from Respondent meeting the requirements of the Policy and its attendant Rules, the Forum transmitted to the parties a Notification of Respondent Default.
On June 12, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a recognized leader in the residential, commercial, institutional, industrial and high-voltage electric construction business
Complainant has common law rights in the J.W. DIDADO mark.
Respondent registered the domain name <jwdldado.com> on May 3, 2020.
The domain name is confusingly similar to Complainant’s J.W. DIDADO mark.
Respondent uses the domain name to pass itself off as Complainant in furtherance of a fraudulent email scheme.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent’s employment of the domain name creates a likelihood of confusion among Internet users which Respondent exploits for its commercial gain.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent sent email correspondence.
As is explained below, Complainant has failed to establish by competent proof that it has rights in the claimed trademark J.W. DIDADO under the common law.
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 propositions in order to obtain a decision that a domain name should be cancelled or transferred to it:
(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 to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response to the Complaint, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is inadequate or manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
In order to demonstrate that it has standing to commence and prosecute a proceeding against Respondent under the Policy, Complainant must establish that it has rights in the claimed trademark J.W. DIDADO. While UDRP complainants most often meet this requirement by showing that they hold a valid trademark registration from the United States Patent and Trademark Office or other national or international trademark authority, it is not necessary for a complainant to hold a trademark registration for a claimed mark so long as it can show that it has rights in the mark under the common law. See, for example,
Iacocca v. Tex. Int’l Prop. Assocs., FA 1088017 (Forum November 29, 2007):
In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, that consumers have come to associate the mark with Complainant, as to the source of the goods.
And see Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July, 27, 2017) (finding that a UDRP complainant had established its common law rights in a mark adequate for purposes of demonstrating standing under Policy ¶ 4(a)(i) to proceed with its complaint by showing concrete evidence of “longstanding use; …; media recognition; and promotional material/advertising.”).
In the case before us, while Complainant asserts common law rights in its claimed J.W. DIDADO mark, it has supplied no evidence whatsoever in support of that contention. Because the record is devoid of proof of Complainant’s asserted common law rights in the mark, we cannot conclude that Complainant has standing to proceed in this forum, and we are therefore powerless to proceed with further analysis of Complainant’s claim. See, for example, LD Products, Inc. v. Webatopia Marketing Limited, FA 1360908 (Forum January 7, 2011):
Complainant argues that it holds common law rights in the … mark, however, it fails to set forth sufficient evidence supporting this fact. The Panel finds that Complainant has not met its burden of proving common law rights pursuant to Policy ¶ 4(a)(i)[,] and[,] therefore, the claim is denied.
Because Complainant has failed to satisfy the standing requirements of Policy ¶ 4(a)(i), it is unnecessary for us to examine other aspects of its Complaint. See, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum April 17, 2017) (finding that, because a UDRP complainant must prove all three elements spelled out in the Policy, a complainant’s failure to prove one of them makes inquiry into the remaining elements unnecessary). See also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (a panel there deciding not to inquire into a respondent’s rights or legitimate interests or its registration and use of a challenged domain name in bad faith where a UDRP complainant failed to satisfy the proof requirements of Policy ¶ 4(a)(i)).
Complainant having failed to present the evidence required to be proven under the ICANN Policy, the Panel concludes that relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the domain name <jwdldado.com> REMAIN WITH Respondent.
Terry F. Peppard, Panelist
Dated: June 15, 2020
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