VRSIM, Inc. v. John Makara
Claim Number: FA0811001233521
PARTIES
Complainant is VRSIM, Inc. (“Complainant”), represented by Donald
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vrsim.com>, registered with Network
Solutions, Inc.
PANEL
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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 11, 2008; the
National Arbitration Forum received a hard copy of the Complaint on November 18, 2008.
On November 12, 2008, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <vrsim.com> domain name is registered
with Network Solutions, Inc. and that
Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 25, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 15, 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@vrsim.com by e-mail.
A timely Response was received and determined to be complete on December 15, 2008.
The National Arbitration Forum received correspondence from Complainant
via e-mail on December 16, 2008, and December 22, 2008, regarding actions
allegedly taken by Respondent subsequent to the filing of the Complaint. This correspondence was not submitted in
conformity with the FORUM’s Supplemental Rule 7, and in light of the Panel’s
findings on the merits of the present case, the Panel does not find it
necessary to consider the substance of this correspondence.
On December 19, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the registrant of the service mark VRSim, USPTO
registration number 2,888,040, registered on September 21, 2004.
Complainant alleges that Respondent lacks rights or legitimate
interests in respect of the disputed domain name <vrsim.com>, on the basis that (1) Respondent has not used
the domain name or a name corresponding thereto in connection with a bona fide offering of goods or
services; (2) Respondent was first made aware of the domain name by
Complainant; (3) Respondent has not been commonly known by the domain name, nor
acquired trademark or service mark rights identical or similar to the domain
name; and (4) Respondent has not made a legitimate noncommercial or fair use of
the domain name.
Complainant alleges that the domain name has been registered in bad
faith on the basis that (1) Respondent has registered or has acquired the
domain name primarily for the purpose of selling, renting, or otherwise transferring
the domain name registration to Complainant for valuable consideration in
excess of Respondent’s documented out-of-pocket costs directly related to the
domain name; (2) Respondent has registered the domain name in order to prevent Complainant
from reflecting the mark in a corresponding domain name, and despite repeated
demands has refused to transfer the domain name to Complainant; (3) Respondent
took unfair advantage of his role as an agent for Complainant as a web service
provider to register the domain name for his own benefit as opposed to the
benefit of Complainant; and (4) Respondent has failed to transfer the domain
name to Complainant despite repeated assurances to the contrary.
B. Respondent
Respondent states that CSI (apparently an entity related to Respondent)
registered the disputed domain name “in order to pursue business use . . . in
advertising and marketing.” In response
to Complainant’s contentions regarding rights and legitimate interests,
Respondent states that CSI acquired the domain name after the previous
registrant did not renew it; that CSI is engaged in sales and service of
computer parts and systems, and has acquired “countless domain names” to
support these offerings; and that CSI has used the disputed domain name “from
time to time.”
Respondent also takes issue with Complainant’s allegations of bad
faith. Respondent acknowledges that
Complainant has demanded transfer of the disputed domain name, but states that
CSI has not solicited Complainant for the purpose of selling the name.
FINDINGS
The Panel finds that Complainant has failed
to meet its burden of proof that the disputed domain name is identical or
confusingly similar to a trademark or service mark in which Complainant has
rights.
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 contends that the disputed domain
name is similar to its registered mark VRSim.
Complainant’s mark is registered on the Supplemental Register of the
U.S. Patent and Trademark Office, registration number 2,888,040. After the USPTO refused registration of the
mark on the Principal Register on the ground that it is merely descriptive of
virtual reality simulation services, Complainant amended its application to
seek registration on the Supplemental Register.
Registration of a claimed mark on the
Supplemental Register, however, is insufficient to show that Complainant has
rights in the mark for purposes of the Policy.
Under United States law, marks that are
merely descriptive, and that have not been shown to have acquired
distinctiveness, may be registered on the Supplemental Register, but that
registration does not confer any of the usual presumptions that accompany a
mark registered on the Principal Register (such as prima facie evidence of
validity, ownership, and distinctiveness).
Thus, the fact of a Supplemental Registration is no evidence whatsoever
the Complainant owns trademark rights in the phrase RELIGION NEWS SERVICE. See Rodale,
Inc. v.
Advance
News Service Inc. v. Vertical Axis, Inc. / Religionnewsservice.com, D2008-1475 (WIPO Dec. 11, 2008). See
also First Am. Real Estate Solutions L.P. v. Manila Industries, Inc.,
FA758614 (Nat. Arb. Forum Sept. 18, 2006) (holding that “the fact that [a] mark
is registered on the Supplementary Register does not advance a finding of
trademark rights in such mark”).
As Complainant offers no other basis on which
the Panel might find the requisite rights in the mark, and in particular
neither contends nor provides evidence that it has common-law trademark rights,
the Panel finds that Complainant has failed to prove that the disputed domain
name is identical or confusingly similar to a trademark or service mark in
which Complainant has rights.
Because the Panel’s finding on the first
element required by Paragraph 4(a) of the Policy is dispositive of the matter
before it, the Panel declines to reach the other two elements.
DECISION
Having considered the elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
David E. Sorkin, Panelist
Dated: January 2, 2009
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