Drax Biomass International Inc. v. joseph rollins
Claim Number: FA1312001534123
Complainant is Drax Biomass International Inc. (“Complainant”), represented by W. Scott Brown of Vinson & Elkins, L.L.P., Texas, USA. Respondent is joseph rollins (“Respondent”), Mississippi, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amitebioenergy.com>, <amitebioenergyllc.com>, <amitebiomass.com>, <amitebiomass.net>, <draxamitebioenergy.com>, <draxmorehousebioenergy.com>, <draxmorehousebiomass.com>, <morehousebioenergy.com>, and <morehousebiomass.com>, registered with Godaddy.Com, Llc.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2013; the National Arbitration Forum received payment on December 11, 2013.
On December 12, 2013, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <amitebioenergy.com>, <amitebioenergyllc.com>, <amitebiomass.com>, <amitebiomass.net>, <draxamitebioenergy.com>, <draxmorehousebioenergy.com>, <draxmorehousebiomass.com>, <morehousebioenergy.com>, and <morehousebiomass.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.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 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2014 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@amitebioenergy.com, postmaster@amitebioenergyllc.com, postmaster@amitebiomass.com, postmaster@amitebiomass.net, postmaster@draxamitebioenergy.com, postmaster@draxmorehousebioenergy.com, postmaster@draxmorehousebiomass.com, postmaster@morehousebioenergy.com, and postmaster@morehousebiomass.com. Also on December 13, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in DRAX, DRAX BIOMASS, AMITE BIOENERGY, AMITE BIOMASS, MOREHOUSE BIOENERGY, and MOREHOUSE BIOMASS and alleges that the disputed domain names are, as the case may be, either identical or confusingly similar to one or other of its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. The disputed domain names, <draxmorehousebioenergy.com>, <draxmorehousebiomass.com>, <morehousebioenergy.com>, and <morehousebiomass.com> were registered on July 9, 2013; the <draxamitebioenergy.com> domain name was registered on July 8, 2013; the <amitebioenergy.com>, <amitebioenergyllc.com>, <amitebiomass.com>, and <amitebiomass.net> domain names were registered on May 4, 2013.
2. There is no commercial agreement between the parties.
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.
In view of Respondent's failure to submit a response, Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory (see Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Complainant asserts trademark rights in the terms, AMITE BIOENERGY, AMITE BIOMASS, DRAX, DRAX BIOMASS, MOREHOUSE BIOENERGY, and MOREHOUSE BIOMASS.
Countless decisions under this Policy hold that a trademark registered with a national authority is evidence of trademark rights (see, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006). The great majority of decisions under the Policy have found that trademark rights arising from registration requires a final, current registration (see, for example, Boston Law Collaborative (BLC), LLC. v. Netico, Inc. a/k/a Jack D., FA 358038 (Nat. Arb. Forum Dec. 24, 2004). On the evidence, none of the aforementioned terms were, at the time of the Complaint, registered trademarks.
Complainant provides evidence that on November 29, 2011 it applied to the United States Patent and Trademark Office (“USPTO”) to register DRAX and DRAX BIOMASS as trademarks. On July 3, 2012 the USPTO issued Notices of Allowance for both trademarks.
A Notice of Allowance from the USPTO is not proof of final registration. Panel is entitled to make its own research into matters of factual relevance. Given that the Notices of Allowance of the DRAX and DRAX BIOMASS trademarks issued 18 months ago, Panel would expect the trademarks to have passed to registration unless there were issues of a kind. Reference to the publicly available data on the USPTO website shows that, in both cases, the January 2014 status of the applications is described as: “A third request for extension of time to file a Statement of Use has been granted”. In other words, the USPTO is still waiting on evidence that the trademarks have been used in commerce.
Complainant has not proved trademark rights by virtue of registration. Nevertheless, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights and so-called common law trademark rights may accrue through use and reputation (see SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000). In this case Complainant asserts that its trademarks have acquired significant goodwill and wide public recognition in the area of Complainant’s business.
Panel notes that, as a matter of law, there is no single definition of common law or unregistered trademark rights. It has been said that a complainant has common law rights if it could sustain an argument of passing off. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) asks at paragraph 1.7: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” In answer, the consensus view of UDRP panelists is that:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required … Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
Complainant states that its rights rest on “the trademarks and service marks AMITE BIOENERGY, AMITE BIOMASS, DRAX, DRAX BIOMASS, MOREHOUSE BIOENERGY, and MOREHOUSE BIOMASS which have been adopted and used in commerce … in connection with the intended manufacture of wood pellets for renewable low-carbon power generation from sustainable biomass.”
That statement is ambiguous in the sense that it makes a claim to present use of the trademarks in relation to a future intention to produce certain products. Nonetheless, the statement is reconcilable with, say, current promotion of those soon to be available products by reference to the trademarks and service marks. Accordingly Panel turns to closer examination of the material before it to determine whether those claims are sustainable.
There is no direct evidence of current use of any of the trademarks, DRAX, DRAX BIOMASS, AMITE BIOENERGY, AMITE BIOMASS, MOREHOUSE BIOENERGY, or MOREHOUSE BIOMASS.
Complainant asserts that a UK company within Complainant’s international company group owns and operates the Drax Power Station, said to be the largest coal-fired power station in the United Kingdom. There is none, but had there been at least some evidence of that claim and of the length of time that station had operated, Panel might have considered a common law trademark claim to DRAX and, possibly, DRAX BIOMASS. Without such evidence, Panel is unable to find trademark rights in those terms.
The Complaint states, additionally, that two US companies, Amite Bioenergy LLC and Morehouse BioEnergy LLC, will operate Complainant’s first two manufacturing facilities in the United States. The facilities are under construction and scheduled to begin operation in 2014. Ignoring completely the missing evidence which a court would require to connect and attribute that possible future use to Complainant, there is nothing at all in the way of evidence that might generate trademark rights.
Panel finds that Complainant has not established trademark rights and so has not satisfied the requirements of paragraph 4(a)(i) of the Policy. It follows that it becomes unnecessary for Panel to look to the other aspects of the Complaint or the Policy.
No findings required.
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <amitebioenergy.com>, <amitebioenergyllc.com>, <amitebiomass.com>, <amitebiomass.net>, <draxamitebioenergy.com>, <draxmorehousebioenergy.com>, <draxmorehousebiomass.com>, <morehousebioenergy.com>, and <morehousebiomass.com> domain names REMAIN WITH Respondent.
Panel makes this Order on a “Without Prejudice” basis. In other words, if and when the relevant trademark rights come into existence, Complainant (either alone or as a co-Complainant) can choose to file a further Complaint under the UDRP against the holder of the disputed domain names and the adjudication of that complaint is not to be prejudiced by the findings in these proceedings.
Debrett Gordon Lyons, Panelist
Dated: January 25, 2014
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