GoTrusted v. Darren Lee / GoTrust Technology Inc.
Claim Number: FA1110001412730
Complainant is GoTrusted (“Complainant”), represented by David Lonardo, Florida, USA. Respondent is Darren Lee / GoTrust Technology Inc. (“Respondent”), represented by Steve T. Tsai of Law Offices of Steve Tsai, ALC, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <go-trust.com>, registered with 1&1 Internet AG.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2011; the National Arbitration Forum received payment on October 24, 2011.
On October 25, 2011, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <go-trust.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 October 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 2011 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@go-trust.com. Also on October 26, 2011, 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 November 15, 2011.
Complainant submitted an Additional Submission to the Forum that was received on November 16, 2011, and Respondent submitted an Additional Submission on November 21, 2011, and were deemed in compliance with Supplemental Rule 7 and considered.
On November 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, GoTrusted of Stuart, Florida (“Complainant”) seeks transfer of the domain name <go-trust.com> from Respondent Darren Lee / GoTrust Technology, Inc., of Tustin, California (“Respondent”). Complainant contends that it is the owner of a federally registered trademark for GOTRUSTED, Registration No.: 3654204 (SN 77/640437), for services in international class 38 for providing private and secure real time electronic communication over a computer network, class 40 for Inserting software protection programs and security programs onto magnetic media, and class 42 for Development of software for secure network operations, all used in commerce since December 11, 2005.
Complainant contends that Respondent’s domain <go-trust.com> is confusingly similar to the <gotrusted.com> domain name of the Complainant. The Complainant further contends that Respondent registered the domain long after Complainant had established use of the domain and was a well-known mark that obtained extensive reputation and goodwill. Complainant further contends that Respondent is attempting to use the domain <go-trust.com> to offer the same or similar goods and services as the Complainant. Complainant further contends that additional evidence of Respondent’s deceptive intent includes the fact that Respondent copied Complainant’s common law mark “Internet Security for People on the Go” with the deceptively similar “Trusted Security Solution for People on the Go”, and as such, claims that Respondent intended to obtain commercial gain from the established name of the Complainant and disrupt the business of Complainant.
B. Respondent
Respondent contends that Complainant fails to allege that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which a Complainant has rights, but rather compares the domain in question to Complainant’s domain name. Respondent further contends that the domain name is not confusingly and/or deceptively similar to Complainant’s domain name, contending that Respondent’s domain name is based upon its registered US Trademark for a stylized design and word mark consisting of the wording “Go-trust”. Respondent provides proof of its registered trademark, Registration No. 3,852,775, (SN 77911025), with a registration date of September 28, 2010 and a first use in commerce date of April 7, 2008. Respondent contends its domain name is a reflection of the wording of its mark. Respondent contends that Complainant fails to satisfy its burden of establishing that Respondent has no rights or legitimate interests in the domain name that is the subject of the Complaint. Respondent contends that its use of the domain name is legitimate because it is based upon Respondent’s registered mark used in association with hardware products in a different class from the classes that Complainant’s software and software services fall under. Respondent also notes that the USPTO did not cite Complainant’s registered mark as a confusingly similar mark in examining the GOTRUST trademark application, but rather found no similar registered or pending marks that would bar registration. Respondent also contends that Complainant fails to satisfy its burden of establishing the domain is registered and used in bad faith. Respondent contends its good faith efforts to differentiate from Complainant by placing a disclaimer on its website.
C. Additional Submissions
Complainant submits, as an Additional Submission, proof of Complainant’s acquired goodwill in the mark, including a printout of Complainant’s TV commercial, a copy of a Press Release of an agreement with Experian, a printout of a software review, and various articles about its service. Complainant further discusses issues pertaining to what it refers to as GOTRUSTED service mark “Internet Security for People on the Go”, however, this mark is not directly the subject of this domain arbitration and there is no proof of a registration of this mark.
Respondent submits an Additional Submission seeking to preclude Complainant’s exhibits in the Additional Submission and also submitting additional proof regarding Respondent’s claims of pervasive international use of its GOTRUST trademark.
The panel finds that the domain name registered by Respondent is identical or confusingly similar to the service mark in which the Complainant has rights; however, Complainant has failed to meet its burden of establishing the remaining elements of the policy and the relief requested by Complainant shall be denied.
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.
Complainant submits evidence that it claims establishes its rights in the GOTRUSTED mark under Policy ¶ 4(a)(i). The evidence includes a trademark registration with the United States Patent and Trademark Office ("USPTO") for the GOTRUSTED mark (Reg. No. 3,654,204 registered July 14, 2009). Under the UDRP evidence of a trademark registration with a national trademark authority, including the USPTO, is sufficient for a complainant to establish rights in its asserted mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Further, Complainant contends that the <go-trust.com> domain name is confusingly similar to its GOTRUSTED mark and domain. The domain name adds a hyphen to the mark, omits the letters “e” and “d,” and adds the generic top-level domain (“gTLD”) “.com.” Despite those changes the disputed domain name is confusingly similar to the GOTRUSTED mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent’s ownership of a design mark is not determinative on this issue. See FRH Freies Rechenzerntrum Heiberufe v. Ingenieurburo FRH Stuttgard, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that the complainant had not proven by a preponderance of the evidence that the <frh.biz> domain name was identical to the complainant’s FRH mark because the complainant’s “registrations are not for ‘FRH’ alone, but . . . for stylized versions of the letters ‘FRH’ accompanied by the [complainant’s] name”); see also Advanced Educ. Sys., LLC v. Bean FA 948593 (Nat. Arb. Forum May 23, 2007) (“Although Complainant possesses federal registrations for the marks … the rights conferred by these [sic] USPTO are limited to the distinctive graphical manner in which the marks are actually depicted and do not confer exclusive rights to the ‘traingingpro’ in other forms and styles and most certainly do not confer exclusive rights in the common, descriptive phrase ‘training pro.’”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant does not contend that Respondent is not commonly known by the <go-trust.com> domain name. Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent contends, and submits evidence to show, that it owns a valid trademark with the USPTO for its “Go-Trust” design mark. Further, the WHOIS information indicates that the domain name registrant is “Darren Lee / GoTrust Technology Inc.” Respondent’s trademark registration shows a filing date for the “Go-Trust and design” mark of January 13, 2010 with a registration date of September 28, 2010, which is prior to this dispute being brought. See Respondent’s Exhibit 1. Based upon this information, and the lack of argument under Policy ¶ 4(c)(ii) from Complainant, the Panel finds that Complainant has failed to meet its burden of establishing this element. See Am. Credit Union Buyers Ass’n v. Acuba Ltd., FA 164306 (Nat. Arb. Forum July 16, 2003) (finding that complainant’s allegations that “[n]o evidence indicates that Respondent has been known . . . by the Domain Name” did not acknowledge or address evidence that respondent was known by the disputed domain name, having registered <acuba.com> under the name Acuba Limited, and, therefore, were not a prima facie showing under Policy ¶ 4(a)(ii)).
Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <go-trust.com> domain REMAIN WITH Respondent.
David P. Miranda, Esq., Panelist
Dated: December 8, 2011
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