RecruitUSA Inc. v. Brian
Krueger
Claim Number: FA0806001203764
PARTIES
Complainant is RecruitUSA Inc. (“Complainant”), represented by Marc
Jonas Block, of Salon Marrow Dyckman Newman & Broudy
LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arbita.com>, registered with Godaddy.com,
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.
David P. Miranda as panelist
Hon. Bruce Meyerson as panelist
Roberto A. Bianchi as chair
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 11, 2008; the
National Arbitration Forum received a hard copy of the Complaint on June 16, 2008.
On June 11, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <arbita.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On June 20, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 10, 2008 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@arbita.com by e-mail.
A timely Response was received and determined to be complete on July 7, 2008.
Complainant timely submitted an Additional Submission. However, payment
for this submission was received late. Thus, the Panel may decline to admit
Complainant’s Additional Submission. Since the Complaint fails to discharge the
onus on Complainant to prove that it has rights in a mark (see below), it would
be pointless to consider further submissions from the Parties. In the present
circumstances, the Panel declines to admit any submissions from the Parties
other than the Complaint and the Response.
On July 22, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Hon. Bruce Meyerson and David P. Miranda as
panelists, and Roberto A. Bianchi as chair.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
In essence, Complainant contends the following:
-
Complainant
contends that it owns the “active trademark” ARBITA, which was first
used in commerce on September 24, 2001 regarding recruiting, staffing and
advertising services, etc. On December 28, 2007, Complainant filed before the
USPTO two trademark applications
for the word mark ARBITA and one application for the word mark ARBITA THE WAY FORWARD.
-
Complainant
alleges that it was the former owner of the domain name at issue, and that this
registration lapsed due to a clerical error. Respondent subsequently registered
the domain name. Respondent caused the traffic intended for <arbita.com> to be re-directed first to the websites <recruitusa.com> and
later to the website <arbita.net>, both owned by Complainant. Thus, Complainant
and visitors were unaware that the domain name at issue had been registered by
Respondent until 2007, where Respondent decided to “park” its website with
Godaddy.com “parking” service.
-
Respondent,
says Complainant, is a competitor of Complainant.
-
Complainant
contends that the domain name in dispute is identical to and likely to cause
confusion with Complainant’s ARBITA mark. Respondent has no rights or
legitimate interests in respect of the domain name. Respondent admitted that he
has made no actual use of the domain name, which is evidence of bad faith in
registering the domain name. Also, it is evidence of bad faith that Respondent
offered to sell the domain name <arbita.com> for valuable consideration to Complainant.
Respondent is a competitor of Complainant, and his registration of the domain
name disrupts Complainant’s business.
B.
Respondent
In essence, Respondent contends the following:
-
Respondent
denies that Complainant has rights in the ARBITA mark, since the trademark
applications were made more than a year and a half after Respondent purchased
the disputed domain name.
-
Respondent
denies that he is a competitor of Complainant. Respondent contends he is an
employee of Amazon.com, working in a non-competitive field and doing
non-competitive work. Respondent did not offer to sell the domain name until
contacted by Complainant and only after and because of the threat of
litigation.
-
Respondent
lawfully purchased the domain name with the plan of developing a site in the
future around the topic of arbitration.
FINDINGS
Complainant failed to prove that it has
rights in the trademark on which the Complaint is based. It is unnecessary for
the Panel to examine the second and third element of the Policy for concluding,
as it does, that the Complaint must fail.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Under the first element of the ICANN Policy a complainant is required to
prove, first, that it has rights in a trademark or service mark, and second,
that the domain name in dispute is identical or confusingly similar to such
mark.
The ICANN Policy does not distinguish between registered and unregistered marks. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (acknowledging that Policy ¶ 4(a)(i) refers merely to a “trademark or service mark,” without expressly limiting itself to a registered trademark or service mark, and further recognizing that the WIPO Final Report of April 1999, from which the Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names, and further concluding that the Policy is applicable to unregistered trademarks and service marks); see also Hankison Int’l v. Hankisoninternational.com, FA 94393 (Nat. Arb. Forum May 3, 2000) (considering that trademark rights are acquired and maintained by actual use of the mark in commerce and that unregistered marks also are protected under common law principles, and finding that the domain name in issue was nearly identical to Complainant’s name and long-used unregistered mark). However, in order to determine whether the ARBITA unregistered mark complies with Policy ¶ 4(a)(i), the Complainant must establish that it has common law rights to the mark. Such standards include length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. See Amsec Enters., L.C. v. McGall, D2001-0083 (WIPO Apr. 3, 2001) (stating that evidence of a secondary meaning for a mark, sufficient to justify a finding of a common law trademark “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
As regards its rights in a mark, Complainant states that it owns the “active trademark” ARBITA, which was first used in commerce on September 24, 2001 regarding recruiting, staffing and advertising services, etc. Complainant submits printouts of three trademark applications filed before the USTPO on December 28, 2007: Serial Number 77/360,903 for Word Mark “ARBITA”, standard character mark, (Exhibit "D"); Serial Number 77/360,964 for Word Mark “ARBITA”, design plus words, letters and/or numbers, (Exhibit “E”), and Serial Number 77/360,952 for Word Mark “ARBITA THE WAY FORWARD”, design plus words, letters and/or numbers (Exhibit “F”). Each application is for a mark covering recruiting, staffing and advertising services, etc., of International Class 035. As to first use, Serial Number 77/360,903 and Serial Number 77/360,952 state, "FIRST USE: 20070301. FIRST USE IN COMMERCE: 20070301". The three applications are pending.
The panel
in Amsec (see supra)
found that the mere claim of use of the mark since 1992 together with a
statement that the complainant’s gross sales exceeded US$7 million and a web
page were held to be insufficient evidence of secondary meaning. In the instant case, Complainant merely states in
its complaint that it is the owner of the active trademark in the term
“Arbita,” and of the active domain names <arbita.net>,
<arbita.info> and <arbita.biz>, as well as the former registrant of
the domain name at issue. Complainant also states that in March 1996 its
founders began using the mark RECRUITUSA in furtherance of its employment
agency services, and that in 2001, Complainant’s team of public relations
created the ARBITA trademark. Complainant submits printouts of the Internet
Archive (or “Wayback Machine”) showing several snapshots of the website at the
disputed domain name from September 24, 2001 until November 29, 2006.
The Panel believes that Complainant’s
allegations and evidence provided with the Complaint are not sufficient to
prove common law rights in a mark, since Complainant does not present the Panel
with any details on sales conducted under such mark, or on advertising, or on
surveys and media recognition, or any other proof to establish that its mark
has become distinctive and has acquired secondary meaning. Based on the instant record the Panel
concludes that Complainant has failed to prove that it has rights in the ARBITA
unregistered mark.
In light of this finding, it is
unnecessary to determine whether Respondent has rights or legitimate interests
in respect of the domain name, or whether it has registered and is using the
domain name in bad faith. See I4 Solutions, Inc. v. Miani, FA 1153871 (Nat. Arb. Forum April 24, 2008) (finding unnecessary to
examine Policy ¶¶ 4(a)(i) and (ii), as Complainant
must succeed under all three portions in order to grant the requested relief;
thus, a denial under Policy ¶ 4(a)(iii) leads the Panel to decline to analyze
the other portions of the Policy); see also Creative Curb v.
Edgetec Int’l Pty. Ltd., FA
116765 (Nat. Arb. Forum Sept. 20, 2002) (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 elements
unnecessary.
DECISION
Since Complainant failed to establish the
first element required under the ICANN Policy, the Panel concludes that relief
shall be DENIED.
Roberto A. Bianchi, Chair,
Hon. Bruce Meyerson, Panelist
David P. Miranda, Panelist
Dated: August 5, 2008
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