Viking Client Services, LLC v. Jerry VerHagen / Global Mediation Group LLC
Claim Number: FA2205001997765
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vikingacquisitionsllc.com>, registered with GoDaddy.com, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2022; the Forum received payment on May 24, 2022.
On May 26, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <vikingacquisitionsllc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 31, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@vikingacquisitionsllc.com. Also on May 31, 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 June 30, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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, Viking Client Services, LLC, offers debt recovery services. Complainant has common law rights in the VIKING word and logo marks. Respondent’s <vikingacquisitionsllc.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark while adding the generic terms “acquisitions” and “llc”, along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <vikingacquisitionsllc.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its VIKING mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead diverts internet users to its competing services while phishing for users’ personal information.
Respondent registered and uses the <vikingacquisitionsllc.com> domain name in bad faith. Respondent diverts users to its website where it offers competing services for commercial gain while creating a likelihood of confusion. Additionally, Respondent used a privacy service to hide its identity. Furthermore, Respondent failed to respond to Complainant’s cease-and-desist letter. Lastly, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the VIKING mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Viking Client Services, LLC (“Complainant”), of Eden Prairie, MN, USA. Complaint alleges it has common law rights in the word mark VIKING individually as well as with an associated logo, and an indeterminate number of VIKING formative marks used in connection with its provision of debt recovery, claims management, and payment processing services. Complaint states it has continuously used its mark since at least as early as 1969 and additionally has registered a domain name at <vikingservice.com> for purposes of providing its services via the internet.
Respondent is Jerry VerHagen / Global Mediation Group LLC (“Respondent”), of Buffalo, NY, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the <vikingacquisitionsllc.com> domain name was registered on or about January 2, 2020.
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”).
Complainant claims common law rights in the VIKING mark. Under Policy ¶ 4(a)(i), common law rights in a mark may be sufficient in lieu of a registered trademark, and may be demonstrated through secondary meaning. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). The Panel agrees that a Complainant may show satisfaction of this element by establishing common law rights in the claimed mark.
Complainant asserts its common law rights in the VIKING mark, contending it has established secondary meaning through several factors. Secondary meaning of a mark may be established through a variety of factors including longstanding use on its website and social media platforms, and its recognition by the consuming public. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Respondent does not dispute Complainant has used the VIKING mark in connection with its debt recovery services since 1969 and uses the mark at its own website along with its use on various social media platforms such as Facebook and LinkedIn.
However, the Panel here finds that Complainant has provided insufficient evidence in support of its claim of common law rights. Complainant offers no documentation illustrating time of use in support of longstanding website or social media claims. A current presence, although undisputed, does not provide chronological data indicative of long-term use. Additionally, although Complainant indicates use since 1969 there is no indication of the scope of such use. Secondary meaning generally requires evidence such as the length of the mark’s use, the number of sales under the mark, the nature and extent, including monetary proof, of advertising utilizing the mark, and proof of consumer association with the mark through surveys or media recognition. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as March 30, 2004, of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.).
Complainant provides no detailed evidence of the type noted above. Complainant does indicate it owns the domain name <vikingservice.com> but does not indicate how long it has been registered. The mere registration of a domain name does not automatically confer secondary meaning on the mark that is used. Complainant’s exhibits do not indicate the manner in which they have used the VIKING mark since 1969. Complainant has provided no registrations of any type for its business or its claimed mark beside design mark registration references in a cease and desist letter. Aside from that there are several replications of what appear to be relatively mixed uses of the claimed mark in a variety of nonspecific settings from unknown periods. The Panel finds that Complainant has failed to show that it has common law rights in the VIKING mark as proof of secondary meaning is lacking. Complainant has not shown that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights per Policy ¶ 4(a)(i).
The Complainant has NOT proven this element.
Because Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. 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)).
Because Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. 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)).
As the Complainant has NOT established all three elements required under the applicable ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <vikingacquisitionsllc.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
July 18, 2022
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