national arbitration forum

 

DECISION

 

Swift Unlocks, Inc. v. Cellular King.com. Inc. d/b/a Instantunlock.com

Claim Number: FA1306001505708

PARTIES

Complainant is Swift Unlocks, Inc. (“Complainant”), represented by Christina S. Loza of Loza & Loza, LLP, California, USA.  Respondent is Cellular King.com. Inc. d/b/a Instantunlock.com (“Respondent”), represented by Peter E. Nussbaum of Wolff & Samson PC, New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <unlockfusion.com> and <swiftunlock.com>, registered with Omnis Network, LLC, and GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he and the panel has acted independently and impartially and to the best of his knowledge we have no known conflict in serving as Panelists in this proceeding.

 

Hon. Daniel B. Banks, Jr. (Ret.) as Panel Chair

Hon. Karl Fink (Ret.), as Panelist

Jonas Gulliksson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2013; the National Arbitration Forum received payment on June 19, 2013.

 

On June 21, 2013 and June 27, 2013, Omnis Network, LLC, and GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <unlockfusion.com> and <swiftunlock.com> domain names are registered with Omnis Network, LLC, and GoDaddy.com, LLC and that Respondent is the current registrant of the names.  Omnis Network, LLC, and GoDaddy.com, LLC has verified that Respondent is bound by the Omnis Network, LLC, and GoDaddy.com, LLC registration agreements 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 July 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2013 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@unlockfusion.com, postmaster@swiftunlock.com.  Also on July 2, 2013, 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 August 1, 2013.

 

On August 6, 2013, an Additional Submission was filed by Complainant and deemed to be compliant.

 

On August 9, 2013, an Additional Submission was filed by Respondent and deemed to be compliant.

 

On August 13, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., Hon. Karl Fink and Jonas Gulliksson as Panelists.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant’s Contentions

Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity of Domain Names

• Complainant states that it was founded in July 2008 by Mr. Prashant Vira. Complainant argues that it registered and used the <swiftunlocks.com> domain name (registered July 12, 2008) and <unlockfusion.net> domain name (registered April 22, 2011) to provide cell phone unlocking services. Complainant also provided cell phone unlocking services through an eBay site located at <ebay.unlockfusion.net>. Complainant used the domain name’s underlying SWIFT UNLOCKS mark continuously since 2008, and the underlying UNLOCK FUSION mark since the 2011 registration. Complainant has pending trademark applications for both marks. Complainant’s SWIFT UNLOCKS service has achieved 150,000 feedback reviews, and millions of dollars in services have been sold under this mark. SWIFT UNLOCKS services are recognized as a “Top Seller” service—a status bestowed only on vendors who offer to high volume sellers while maintaining near perfect review ratings.
• Respondent has registered the <unlockfusion.com> domain name, which simply adds the generic top-level domain (“gTLD”) “.com.”
• Respondent registered the <swiftunlock.com> domain name, which merely removes a letter “s” and adds the gTLD “.com.”

Policy ¶ 4(a)(ii): Respondent Lacks Rights and Legitimate Interests

• Respondent is not known by these domain names, and is not authorized to use Complainant’s marks in running a competing business.
• Respondent offers identical cell phone unlocking services through both of the disputed domain names.

Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use and Registration

• Respondent’s decision to use both domain names to run businesses that compete with Complainant is evidence of a bad faith attempt to disrupt Complainant’s business.
• Respondent is diverting Internet users to his own competing businesses by creating the impression that Complainant is the mastermind of these commercial offering.
• Respondent first registered the <swiftunlock.com> domain name in 2008, at a time when cell phone unlocking was a niche market. It is thus highly unlikely that anyone running a competing business such as Respondent would have lacked actual knowledge of Complainant’s marks before registering the domain name.

Respondent registered the domain names:

• <swiftunlock.com>, on September 2, 2008
• <unlockfusion.com>, on April 27, 2012.

 

Respondent’s Contentions

Policy ¶ 4(a)(i): Complainant Lacks Rights

• Given the highly descriptive nature of SWIFT UNLOCKS, Complainant would need to provide a lot more evidence than it has to illustrate its rights. Self-serving statements in the Complaint such as claims of ‘millions in revenue’ are not enough. Complainant rests heavily on positive reviews of its products, yet there is no proof as to whether any of these statistics are legitimate and objective, or merely manufactured by Complainant.
• Respondent does not find Complainant’s showing of common law rights to be compelling. Complainant cannot have rights in an UNLOCK FUSION mark, as the mark simply refers to a trademarked product sold by other companies, namely the “fusion” cell phone. By example, Respondent could not claim trademarks if he unlocked cars in a mark called “UNLOCK FORD.” Respondent did not make any notable use of the UNLOCK FUSION mark in commerce until April 2013, and until then it merely sat on the UNLOCK FUSION domain names it owns in a non-commercial manner.
• The domain names are made of generic terms.

Policy ¶ 4(a)(ii): Respondent’s Rights and Legitimate Interests

• Respondent is known by these domain names insofar as they describe the nature of the services provided by Respondent.
• Respondent registered the <unlockfusion.com> domain name for the value of its generic terms. The term “unlock” refers specifically to the cell phone unlocking services offered by Respondent, and the term “fusion” refers to a cell phone model sold by AT&T, Huawei, and HTC. The <swiftunlock.com>, domain name simply implies that Respondent is providing Internet users a “swift” (quick, fast) “unlock” of their phone.

Policy ¶ 4(a)(iii): No Need to Analyze Bad Faith

• Complainant lacks common law rights, and Respondent has made a bona fide offering through its domain name, and thus there is no need to investigate bad faith.

 

Preliminary Issue: Identity of Respondent

 

Cellular King.com. Inc. d/b/a Instantunlock.com (“Responding Party”) claims that it had acquired the <swiftunlock.com> domain name from listed Respondent “Onyx Co.” in 2012, but the WHOIS information was under a privacy protection service that did not update the registrant information until after Complainant’s inquiry. Responding Party also claims that listed Respondent “S. Zack” is one of Responding Party’s principals. The Panel infers that Responding Party is the recorded owner of the domain names and elects to alter the case caption to reflect the fact that “Cellular King.com. Inc. d/b/a Instantunlock.com” is the Respondent in this case. See Rhodia v. Paperboy & Co., D2006-0851 (WIPO Sept. 8, 2006) (finding that the person or entity listed as the domain name registrant on the disputed domain name’s WHOIS record is the proper respondent in claims regarding that domain name).

 

FINDINGS

The Panel finds that Complainant does not have registered trademark rights in the disputed domain names and that Complainant has failed to demonstrate valid common law rights that predate the registration of the disputed domain names.

 

DISCUSSION

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 has failed to demonstrate valid service mark rights in its alleged marks.  It has provided no evidence through either the Complaint or Complainant's Additional Submission that would support its claim that it owns protectable service mark rights in either of its alleged marks. 

 

Neither of Complainant's purported marks are the subject of a service mark registration.  Where no registration exists, it is well settled that Complainant must demonstrate valid common law rights that predate the registration of the domain names in order to prevail.  The evidence presented does not demonstrate that the Complainant has valid common law rights in the disputed domain names.  See e.g. New Jersey Turnpike Authority v. On-Site (GARDENSTATEPARKWAY-DOM), et. al.,  FA 1305001 (denying claim where common law rights were not firmly established notwithstanding decades of prior use of the marks in issue); GoodTherapy.org,  LLC v. George Washere,  FA1504037  (Nat. Arb. Forum  July 12, 2013)(denying claim where complainant failed to demonstrate sufficient evidence of common law rights and/or distinctiveness in the alleged mark in the period between its purported first use and the date of registration of the domain name); Artistic Pursuit LLC v. calcuttawebdevelopers.com   FA 894477 (Nat. Arb. Forum Mar.8, 2007)(holding that although a trademark registration is not required, a complainant must firmly establish common law rights in its mark).

 

The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), and therefore 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 the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca 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)).

 

DECISION

Having not established all the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <unlockfusion.com> and <swiftunlock.com> domain names remain with Respondent.

 

 

Hon. Daniel B. Banks, Jr. (Ret.), Panel Chair

Hon. Karl Fink (Ret.), Panelist

Jonas Gulliksson, Panelist

Dated:  August 26, 2013