Vokes Limited v. Domain Admin
Claim Number: FA1111001416501
Complainant is Vokes Limited (“Complainant”), represented by John H. Weber of Baker & Hostetler LLP, Washington D.C., USA. Respondent is Domain Admin (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vokes.com>, registered with BULLRUNDOMAINS.COM LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2011; the National Arbitration Forum received payment on November 23, 2011. On November 30, 2011, Complainant amended complaint, as requested, so as to remove the Respondent’s e-mail address from the Respondent’s name, and so as to indicate (Bullrundomains.com LLC) as the Registrar of the disputed domain name.
On November 22, 2011, BULLRUNDOMAINS.COM LLC confirmed by e-mail to the National Arbitration Forum that the <vokes.com> domain name is registered with BULLRUNDOMAINS.COM LLC and that Respondent is the current registrant of the name. BULLRUNDOMAINS.COM LLC has verified that Respondent is bound by the BULLRUNDOMAINS.COM LLC 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 December 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@vokes.com. Also on December 1, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 22, 2011.
On December 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., as Panelist.
Complainant requests that the domain name <vokes.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant, Vokes Limited (“Vokes”) is a corporation organized under the laws of the United Kingdom. Vokes was originally established in the UK in 1921 to manufacture filters and filtration systems, and now is focused on fuel, lubricating oil and insulating fluid filters and filtration systems. Vokes has 75 years of experience and extensive product lines in diverse commercial and industrial applications throughout the world.
Vokes registered the trademark VOKES in the United States under registration No. 1222373, which registration is now incontestable. Further, Vokes also registered the domain name <vokes-spx.com> in 2004 as a means to advertise and provide information regarding its products.
Complainant alleges that the <vokes.com> domain name is identical and therefore, confusingly similar to Voke’s VOKES mark.
Complainant also alleges that the Respondent has no rights or legitimate interests in respect of the <vokes.com> domain name.
Complainant further alleges that the domain name <vokes.com> was registered and is being used in bad faith.
B. Respondent
Respondent concedes that the domain name is identical or similar to a trademark in which the Complainant has rights. Respondent maintains that it has legitimate rights and interests in respect of the domain name, in that Complainant has no exclusive rights to the term “vokes” which is a generic surname and is not inherently distinctive.
Respondent asserts that the domain name <vokes.com> has not been registered in bad faith. Respondent never offered the domain name for sale, Respondent had no knowledge of Complainant’s business at the time of the registration and the doctrine of constructive knowledge is widely rejected by panelists.
Respondent alleges that Respondent’s use of the domain is to provide general information for such items as mortgages, insurance and entertainment, which services are not in competition with Complainant.
Respondent lastly asserts that its use of <vokes.com> does not create a likelihood of confusion between two distinctly diverse businesses.
(1) The domain name <vokes.com> 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.
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.
Identical or Confusingly Similar: Policy ¶ 4(a)(i)
Respondent is in concurrence with Complainant that the domain name <vokes.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Panel rules that the domain name <vokes.com> registered and used by Respondent is identical or confusingly to a trademark or service mark in which Complainant has rights.
Rights and Legitimate Interests: Policy ¶ 4(a) (ii)
As Policy 4(a) of the Policy requires that Complainant must prove each of the above cited three elements, Panelist has determined, after a thorough review of the submitted evidence, that, as discussed below, Complainant has not proved that Respondent has registered and used <vokes.com> in bad faith. Thus, Panel, in its authorized discretion, has declined to analyze whether or not Respondent has Rights and Legitimate Interests in the disputed domain.
Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii) through the proffering of credible evidence. 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).
Respondent has effectively controverted Complainant’s assertion that Respondent has offered the disputed domain name for sale in violation of Policy ¶ 4(b)(i). Complainant had claimed that a “Chris” offered to sell the disputed domain name to Complainant in April, 2011, as evidenced by its Exhibit No. 5. However, according to Complainant’s own Exhibit No. 1, namely, the Whois search results of domain name <vokes.com>, said name was not registered by Respondent until June 12, 2011. Complainant’s arguments fail with respect to this point, as the current registrant cannot be held liable for the actions of a previous registrant. Thus, there is no offer of sale, which would have served as convincing evidence that the disputed name was registered in bad faith.
As the contents of Respondent’s website do not overlap with any goods or services offered by Complainant under the VOKES mark, the evidenced website and offerings fail to lend any credible support to Complainant’s allegations that Respondent registered the disputed name in bad faith, to compete with, or to disrupt the business of, Complainant. Thus, the Panel finds that Respondent’s registration was not in bad faith under Policy ¶ 4(a)(iii). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant).
Respondent maintains that it had no actual notice of Complainant’s business or trademark at the time it acquired the disputed domain name, and that Complainant has failed to provide any evidence that would suggest that Respondent had such knowledge. Such supporting facts and specific examples, could have hypothetically been, if such was existent and if proper proof was supplied therefore, such as a relationship between previous registrant and current registrant re: proposed sale of name to Complainant; and/or widespread advertising extant beyond a specialized and technical channel of distribution.
These types of supporting facts and evidence were not provided to evidence actual knowledge by Respondent of Complainant’s mark prior to registration.
Furthermore, Panel also notes that Complainant’s production and sale of industrial filtration devices and fuel and lubricant oil serves a discrete and technical market. Therefore, its advertising is not likely targeted to reach the consumer market at large.
Complainant correctly asserts that Respondent had constructive notice of the VOKES mark by virtue of Voke’s federal trademark registration. See 15 U.S.C. § 1072; Barney’s Inc. v. BNY Bulletin Board, D2000-0059 (WIPO Apr. 5, 2000). However, this Panel holds that mere constructive notice of a Complainant’s mark is insufficient to demonstrate bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that Respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith); see also Woot, Inc., v. Catalin Lascut, FA 1347022 (Nat. Arb. Forum, Nov. 11, 2010) (the Panel finds that the prevailing view among panels is that constructive use may not be relied upon to establish bad faith).
Based upon the foregoing, Panel finds that Respondent has not registered the disputed domain name in bad faith, as is required by Policy ¶ 4(a)(iii). See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration). As threshold condition of bad faith registration was not proved, Panel declines to analyze whether or not Respondent used the domain name in bad faith.
As Complainant has not met its burden of proving all three elements of ICANN Policy 4(a), Complainant’s requested relief, that Respondent’s domain name of <vokes.com> be transferred to Complainant, is denied.
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 <vokes.com> domain name REMAIN with Respondent.
Carol Stoner, Esq. Panelist
Dated: January 12, 2012
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