World2Work Corporation v.
Kurt Reuss
Claim Number: FA0807001214404
PARTIES
Complainant is World2Work Corporation (“Complainant”), represented by John
A. Franczyk, of John Franczyk & Associates P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fired.com>, registered with GoDaddy.com,
Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Prof. Darryl C. Wilson, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 9, 2008; the
National Arbitration Forum received a hard copy of the Complaint on July 10, 2008.
On July 9, 2008, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <fired.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 July 22, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 11, 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@fired.com by e-mail.
A timely Response was received and determined to be complete on July 24, 2008.
On August 4, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Prof. Darryl C. Wilson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends that it is the owner of the registered mark FIRED
and that Respondent registered the domain name <fired.com> which is identical and/or confusingly similar to
it’s registered trademark. Complainant
further contends that Respondent has no rights or legitimate interest in the
disputed domain and further asserts that Respondent registered and is using the
disputed domain name in bad faith.
B.
Respondent
Respondent contends that it did not register the domain name in bad
faith nor is it using the disputed domain in such a fashion. Respondent notes that Complainant does not
assert knowledge of Complainant’s mark at the time <fired.com> was registered nor has there been an attempted
sale of the domain name, or any attempt to divert business from the
Complainant. Respondent further contends
that Complainant’s mark is generic and thus Complainant has no valid rights to
enforce against Respondent’s domain name.
FINDINGS
Complainant is a corporation engaged in the
business of human resources management, employment hiring, recruiting,
placement, staffing and career networking services. Complainant is the owner of
the registered service mark FIRED for the services mentioned above.
Complainant’s first use in commerce is indicated as September 12, 2004 and the
date of registration per U.S. Reg. No. 3,269, 038 is July 24, 2007. Complainant
states that it has used the mark regularly and continuously since 2004 and that,
“Consistent with this regular and continued use, Complainant’s mark has
acquired secondary meaning and is uniquely identified in the marketplace for
Complainant’s services as a single source-identifying trademark.”
Respondent is an individual who registered
the disputed domain name <fired.com>
on April 16, 1999. The domain does not presently resolve to an
active site nor does Respondent indicate any past use or future plans for the
disputed domain.
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.
Complainant has not adequately established this element.
Although the disputed domain name is for all practical purposes
identical to Complainant’s registered mark, the undisputed facts indicate that
Respondent’s creation and registration of the domain name predate Complainant’s
use and registration of their service mark by several years. As Complainant’s use is junior to Respondent’s,
Complainant cannot satisfy Section 4(a)(i) of the UDRP. See B&V
Assocs., Inc. v. Internet Waterway, Inc.,
FA 147531 (Nat. Arb. Forum Apr. 15, 2003) (“[T]he Policy . . . was intended to protect against infringement of existing
trademark rights by identical or confusingly similar domain name registrations.
Therefore, the Panel concludes that Policy ¶ 4(a)(i)
assumes that Complainant's rights must predate Respondent's domain name
registration . . .”); see also
While it
is not normally required that the issue of genericness be resolved in the UDRP
proceeding, especially when Complainant is the owner of a valid registration,
it is important to address the issue when the mark and the domain consist of
one or more common terms. Complainant’s
belief that its registration gives it “an exclusive right to use the word ‘FIRED’
in commerce…” and that such use extends to a “right to use that word as a
domain name and to register the domain <fired.com>
as its own domain name” is sorely misguided.
Trademark rights do not automatically confer domain name rights and
vice-versa. Procurement of one right
simply provides an improved opportunity for the other. Complainant’s rights in
its mark are restricted by time and nature. The nature of the mark is one of limited scope
based on proven secondary meaning and cannot be extended to prevent others from
continuing to use that word in its normal descriptive sense. The timing of the registration further limits
its scope in light of the pre-existing rights established by senior users. Complainant’s unsupported self-serving
statement that is has established secondary meaning is insufficient to bestow
the breadth of rights it claims. See Molecular Nutrition, Inc. v.
Network News & Publ’ns, FA 156715
(Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to
establish common law rights in its mark because mere assertions of such rights
are insufficient without accompanying evidence to demonstrate that the public
identifies the complainant’s mark exclusively or primarily with the
complainant’s products); Ming v. Evergreen Sports, Inc., FA 154140 (Nat.
Arb. Forum May 29, 2003) (“Bald assertions of consumer knowledge are not an
adequate form of evidence to establish secondary meaning in a name.”).
Because
Complainant has not satisfied Policy Section 4(a)(i)
the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd.,
FA 116765 (Nat. Arb. Forum
Sept. 20, 2002) (finding that because Complainant must prove all three elements
under the Policy, Complainant’s failure to prove one of the elements makes
further inquiry into the remaining element unnecessary); see also Bejinha v.
Whois Guard Protected, FA 836538
(Nat. Arb. Forum Dec. 28, 2006) (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)).
See above.
See above.
DECISION
Because Complainant has failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Prof. Darryl C. Wilson, Panelist
Dated: August 18, 2008
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