LNRS Data Services Limited v. zuhal topuz
Claim Number: FA2204001991299
Complainant is LNRS Data Services Limited (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is zuhal topuz (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aptifore.com>, registered with Dynadot, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2022; the Forum received payment on April 6, 2022.
On April 8, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <aptifore.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 April 8, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2022 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@aptifore.com. Also on April 8, 2022, 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 May 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it offers various information processing services and products. For more than 40 years, LNRS has been providing customers with solutions and decision tools that combine public and industry specific content with advanced technology and analytics to assist them in evaluating and predicting risk and enhancing operational efficiency. Through the power of data and advanced analytics, Complainant helps its customers make better, timelier decisions. Complainant’s innovative solutions enable organizations to manage risks like identity theft, fraud, money laundering and terrorism, and prevent financial crimes, and insurance and government benefit scams. Complainant helps those without traditional credit histories obtain access to funds, assist agencies to find uncollected revenue, and research ways to improve business outcomes for healthcare companies. By bringing clarity to information, Complainant ultimately helps make communities safer, insurance rates more accurate, commerce more transparent, business decisions easier and processes more efficient. Complainant is part of LexisNexis® Risk Solutions Group (RSG), a portfolio of brands that span multiple industries providing customers with innovative technologies, information-based analytics and decision tools and data services that provide market-specific solutions. Approximately 8,700 employees in offices throughout the world support RSG brands by serving customers in more than 180 countries. RSG is part of RELX, a global provider of information and analytics for professional and business customers across industries. RELX is a British-Dutch multinational information and analytics company headquartered in London, England. Its businesses provide scientific, technical and medical information and analytics; legal information and analytics; decision-making tools; and organize exhibitions. With more than 33,000 employees, it operates in 40 countries and serves customers in over 180 nations. It was previously known as Reed Elsevier, and came into being in 1992 as a result of the merger of Reed International, a British trade book and magazine publisher, and Elsevier, a Netherlands-based scientific publisher. Complainant asserts rights in the APTIFORE mark based upon pending registration with various trademark agencies worldwide, including in the United States, application filed February 15, 2022.
Complainant alleges that the disputed domain name is identical to its APTIFORE mark because it contains the mark in its entirety, merely adding the generic top-level domain (“gTLD”) “.com”.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s APTIFORE mark and is not commonly known by the disputed domain name. Additionally, Respondent uses the disputed domain name to redirect users to a listing of the disputed domain name for sale at a price of $25,000.00 USD.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent offers the disputed domain name for sale at a price exceeding Respondent’s out-of-pocket expenses. Additionally, Respondent registered the disputed domain name the day after Complainant filed a trademark application for the mark with the USPTO and other trademark agencies worldwide. Furthermore, Respondent registered the disputed domain name using a privacy service. Finally, Respondent did not respond to Complainant’s cease-and-desist letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant filed a trademark application for APTIFORE on February 15, 2022. The application is pending.
The disputed domain name was registered on February 16, 2022.
For the reasons set forth below, the Panel will not make any other findings of fact.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
The Panel notes that the disputed domain name is identical, in the sense of the Policy, to the string APTIFORE.
However, in order to make a decision on this element of the Policy, the Panel must first determine whether Complainant has trademark rights in that string. For convenience, it will also discuss the timing of the rights, since that is relevant for the third element of the Policy.
Complainant asserts rights in the APTIFORE mark based upon pending registration with various trademark agencies worldwide, including in the United States. However, the Panel notes that pending trademark applications are generally insufficient to establish rights in a mark. According to of 1.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”): “A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i).” See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”); see also Imagine Nation Books Ltd. v. LEE, LAWRENCE, FA 1662128 (Forum Mar. 31, 2016) (“Complainant’s only assertion of rights in the mark stem from a trademark application and the statement that Complainant offers ‘services and goods under the name Collective Goods’… [and] pending trademark applications do not establish rights in a mark under Policy ¶ 4(a)(i).”).
The Panel notes, obiter dictum, that, If the registration is approved, then Complainant would have rights dating back to the application date, that is, to February 15, 2022.
Complainant could, in principle, establish common law rights in the APTIFORE mark. Under Policy ¶ 4(a)(i), a complainant is not required to own a registered trademark prior to the registration of the disputed domain name if the complainant can establish common law rights in the mark. Section 1.3 of the cited WIPO Jurisprudential Overview 3.0 states:
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. …
See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”); see also Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA 1763598 (Forum Jan. 22, 2018) (“While Complainant does not specifically argue that it has common law trademark rights in FIND YOUR BALANCE, the Panel finds Complainant’s evidence infers that the Complainant has acquired secondary meaning within the FIND YOUR BALANCE mark.”). Common law rights in a mark may be established through evidence that the mark has acquired a secondary meaning. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., 1763598 (Forum Jan. 22, 2018) (Complainant established common law rights with evidence of secondary meaning, including “annual sales of $50 million” and “advertisements of Complainant’s FIND YOUR BALANCE bracelets from Google searches, advertisements for Complainant’s goods found on social media, and a certification from Mark Izen, Complainant’s manager..”).
However, Complainant has not provided any evidence to show that it has established common law rights in the APTIFORE mark. A search for APTIFORE on Complainant’s web site <lexisnexisrisk.com> returns no results.
The Panel therefore finds that Complainant has failed to satisfy its burden of proving that it has trademark rights for the purposes of the Policy. Consequently, the Complaint is dismissed without the need for an analysis of the other elements of the Policy.
The Panel notes, obiter dictum, that, if Complainant does establish registered trademark rights, then that might be considered to be “legally relevant developments [that] have occurred since the original UDRP decision” and thus justify refilling a complaint. See 4.18 of the cited WIPO Jurisprudential Overview 3.0. See also Alpine Entertainment Group, Inc. v. Walter Alvarez, D2007-1082 (WIPO, Dec. 4¸2007) (“The new evidence is the evidence that the United States trademark REALSPANKINGS has now registered. Given that the prior case failed on the first element, the new evidence of trademark registration is likely to have an important influence on the result of the case, although it may not be decisive. The registration of the REALSPANKINGS trademark is not challenged by the Respondent. This new evidence was not in existence at the time of the earlier decision and was therefore unable to be considered by the prior panel in relation to its original finding under the threshold first element of the Policy. The Panel therefore finds that the refiled Complaint should be heard by the present Panel.”)
Since Complainant has failed to establish the first element of the Policy, the Panel need not consider the second element. 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)).
Since Complainant has failed to establish the first element of the Policy, the Panel need not consider the third element.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. This decision is without prejudice to any future complaints.
Accordingly, it is Ordered that the <aptifore.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: May 4, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page