Republic Electric Company v. Drake Decker
Claim Number: FA2009001910890
Complainant is Republic Electric Company (“Complainant”), represented by Andrew Barcus, Iowa, USA. Respondent is Drake Decker (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <republicco.org>, registered with Wild West Domains, LLC.
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 Forum electronically on September 1, 2020; the Forum received payment on September 1, 2020.
On September 2, 2020, Wild West Domains, LLC confirmed by e-mail to the Forum that the <republicco.org> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 September 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@republicco.org. Also on September 8, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in REPUBLIC and/or REPUBLIC CO[i] and alleges that the disputed domain name is confusingly similar to its trademark(s).
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.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant distributes electrical and mechanical products; and
2. the disputed domain name was registered on November 20, 2019 and has been used by Respondent to pass itself off as Complainant.
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 based on 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.
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. In this case, the Complaint fails to adequately establish trademark rights for the reasons which follow.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] The Complaint does not reference any such registrations. Nevertheless, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights and panels have found that a governmental registration is not required so long as the complainant can establish common law trademark rights.[iii]
Proof of common law rights is the critical aspect of these proceedings and Complainant must show extensive and continuous use in commerce such that consumers have come to associate the asserted mark with the Complainant as being the source of the goods or services. So, for example, in the case of Iacocca v. Tex. Int’l Prop. Assocs., FA 1088017 (Forum Nov. 29, 2007) the panel said that:
“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.”
The relevant submissions in the Complaint are that:
“Republic Electric Company has been representing itself through a website and by communicating via email using the domain RepubicCo.com since the domain was originally registered on 1997-04-15. Republic Electric Company has existed for 104 years and is currently in the business of distributing electrical and mechanical products.
Although Republic Electric Company has not formally registered the Trademark or Service Mark it is using, the Internet Archive Wayback Machine at web.archive.org can be consulted to demonstrate the fact that Republic Electric Company has been using the same logo and service mark since March 14, 2012. …
The content this web.archive.org pate is included as Annex 8.
Concluding the Complaint is a list of annexures, nos.1 through to 6. None relate to Wayback Machine evidence. There is no annexure 7, but an annexure 8 is a screenshot seeming to show a landing page for a domain name owned by Complainant as it resolved on March 14, 2012. It shows use of a “Republic” and eagle device logo associated with Complainant’s business on that date. This constitutes the whole of the evidence of trademark rights and for the reasons set out in Iacocca v. Tex. Int’l Prop. Assocs the Panel is not satisfied that the evidence proves common law rights.[iv]
The Panel therefore finds that Complainant has failed to show trademark rights in a term which is either identical or confusingly similar to the disputed domain name. Accordingly, the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.
No findings required.
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <republicco.org> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: October 4, 2020
[i] It is not clear from the Complaint.
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 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).”)
[iii] See, for example, Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”).
[iv] See more generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) at 1.3.
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