National Arbitration Forum

 

DECISION

 

Oasis Technology Partners, Inc. v. James Dale c/o Administrative Contact

Claim Number: FA1003001310642

 

PARTIES

 

Complainant is Oasis Technology Partners, Inc. (“Complainant”), represented by Merton E. Thompson, of Burns & Levinson LLP, Massachusetts, USA.  Respondent is James Dale c/o Administrative Contact (“Respondent”), represented by Paul R. Keating, Spain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <oasis.com>, registered with Enom, 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.

 

Debrett G. Lyons, Judge Bruce Meyerson and G. Gervaise Davis III, Esq. as Panelists.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2010.

 

On March 2, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <oasis.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2010 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@oasis.com.  Also on March 4, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.

 

A timely Response was received and determined to be complete on March 23, 2010.

 

On April 8, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett G. Lyons (chair),                                       Judge Bruce Meyerson and G. Gervaise Davis III, Esq. as Panelists.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant asserts trademark rights in the word OASIS and alleges that the disputed domain name is identical to the trademark.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

 

            Respondent broadly denies those allegations.

 

FINDINGS

 

So far as relevant to the Discussion which follows, the factual findings are that:

 

1.      Complainant offers a broad range of computer and website design and consultancy services[i].

 

2.      Complainant offers those services under the trademarks OASIS and OASIS TECHNOLOGY PARTNERS and has filed United States Federal Trademark Application Nos. 77/886,504 on December 4, 2009 and 77/886,517 on December 8, 2009 seeking registration of those trademarks.  Both applications carry a first use in commerce claim of February 1, 2001.

 

 

 

 

 

 

 

 

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.”

 

Policy ¶ 4(a) 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.

 

Identical and/or Confusingly Similar

 

Policy ¶ 4(a)(i) requires a two-fold enquiry - a threshold investigation of whether a complainant has rights in a trademark, together with an assessment of whether the trademark and the domain name are identical or confusingly similar.

 

If Complainant here can show that it has trademark rights in OASIS then there is no doubt that the domain name <oasis.com> is legally identical to the trademark[ii].

 

There is ample authority for the proposition that a US Federal trademark registration is prima facie evidence of rights in a trademark[iii].  Nonetheless, Complainant refers only to a recently filed application for registration for the trademark OASIS.  There is no evidence before the Panel that the application has matured to registration since the Complaint was filed.  Accordingly, Complainant does not establish rights in the trademark through registration.

 

Nonetheless, a trademark registration is not required by Policy ¶ 4(a)(i) provided Complainant can establish common law rights in the trademark[iv].  The issue for the Panel is whether Complainant has done enough to show common law trademark rights.

 

Although Complainant chose to file the Complaint with the National Arbitration Forum, the Complaint references decisions under the Policy made by panelists of the other major forum administering the UDRP, the World Intellectual Property Organisation (WIPO).  In addition to publishing its decisions under the Policy, WIPO has also published a so-called “Overview of WIPO Panel Views on Selected UDRP Questions.”

 

That Overview poses the following Q&A of relevance to the discussion here:

 

1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?

Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.  The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark.  Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.

Relevant decisions:
Uitgeverij Crux v. W. Frederic Isler D2000-0575, Transfer
Skattedirektoratet v. Eivind Nag D2000-1314, Transfer
Amsec Enterprises, L.C. v. Sharon McCall D2001-0083, Denied
Australian Trade Commission v. Matthew Reader D2002-0786, Transfer
Imperial College v. Christophe Dessimoz D2004-0322 among others, Transfer

 

Decisions of this Forum have underscored those same points.

 

Complainant contends that it has been in the business of providing creative services for clients in the sports, clothing, entertainment, travel and technology industries since 2001.  Complainant asserts that it has engaged in extensive use and promotion of the OASIS trademark and has established a valuable goodwill in the trademark in its industry.  Complainant further asserts that consumers have come to associate the trademark with Complainant and its creative services.

 

Nonetheless, the Panel notes that these are bald claims unsupported by any proof of reputation of the kind described above.  The Panel is reminded of what was said in Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003):

 

Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions[v].

 

In addition, even if the Panel were to assume a valid trademark, it would also have to consider here the fact that “Oasis” appears to be a highly generic term which would require a showing of uniqueness in order to overcome that aspect as well.

 

In the result, the Panel is unable to attribute common law rights to the trademark and so the necessary consequence is that Complaint has failed to establish trademark rights under the first limb of the Policy.

 

 

Rights or Legitimate Interests / Registration and Use in Bad Faith

 

No findings required[vi].

 

DECISION

 

Having failed to establish at least one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

Debrett G. Lyons

Judge Bruce Meyerson

G. Gervaise Davis III, Esq.

Panelists

Dated: April 20, 2010