WMS Group, Inc. v Molly Jenkins / Brandz Agency Inc.
Claim Number: FA1501001601220
Complainant is WMS Group, Inc. (“Complainant”), represented by Catherine E. Maxson of Davis Wright Tremaine LLP, Washington, United States. Respondent is Molly Jenkins / Brandz Agency Inc. (“Respondent”), Washington, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tagstrophy.com> and <tagsawards.com>, registered with ENOM, INC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 21, 2015; the National Arbitration Forum received payment on January 21, 2015.
On January 22, 2015, ENOM, INC. confirmed by email to the National Arbitration Forum that the <tagstrophy.com> and <tagsawards.com> domain names are registered with ENOM, INC. and that Respondent is the current registrant of the names. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 January 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tagstrophy.com, postmaster@tagsawards.com. Also on January 26, 2015, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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 owns online and brick and mortar retail stores specializing in the design and sale of awards, trophies, apparel, and other gifts. Complainant and its predecessors in interest have used the marks TAGS and TAGS AWARDS & SPECIALTIES in connection with this business continuously since 1972. Complainant asserts that these marks are strong as a result of their longstanding use and inherent distinctiveness. Complainant opened its second brick and mortar store in 2013, and receives orders from across the United States. Complainant estimates that its sales for 2014 amounted to $893,000 and that it spent $27,000 in advertisements promoting its marks and goods and services during that year.
Complainant contends that the disputed domain names, <tagstrophy.com> and <tagsawards.com>, are confusingly similar to its marks. Complainant contends further that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the domain names were registered and are being used in bad faith. In support thereof, Complainant notes that Respondent registered the domain names in 2013, long after Complainant’s marks came into existence; that Respondent is located in Lacey, Washington, a town that is adjacent to Olympia, Washington, where Complainant is located; and that Respondent has used the domain names for a website that contains content copied from Complainant’s site and purports to offer goods that compete with those offered by Complainant. (The website to which <tagstrophy.com> resolves was changed recently, after Respondent received a demand letter from Complainant, and now contains a statement that the domain name is for sale; the other disputed domain name, <tagsawards.com>, redirects users to a site that promotes competing goods.) Complainant alleges that Respondent is using the domain names as part of a plan to steal business from Complainant by deceiving consumers. Complainant also accuses Respondent of registering other domain names that correspond to trademarks held by third parties.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has not met its burden of proving that it has rights in a trademark or service mark.
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, the 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. The 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); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
To prevail under the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Although a trademark registration is not required, a complainant’s burden is more onerous if its claimed rights arise solely at common law.
In order to show common-law rights for purposes of the Policy, Complainant must present evidence that the name has acquired secondary meaning—i.e., that it has become a distinctive identifier associated with Complainant or its goods or services. Such evidence may include length and amount of sales under the claimed trademark, the nature and extent of advertising, consumer surveys, and media recognition. A conclusory allegation of common law rights is normally insufficient, even if undisputed. Where the claimed mark is comprised of descriptive or dictionary words, Complainant has a greater onus to present compelling evidence of secondary meaning or distinctiveness. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 1.7 (2d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview/; Bangz v. Pelardis, FA 1486688 (Nat. Arb. Forum Apr. 24, 2013) (quoting the WIPO Overview with approval); see also, e.g., LD Products, Inc. v. Webatopia Marketing Ltd., FA 1360908 (Nat. Arb. Forum Jan. 7, 2011) (denying claim in default case due to lack of evidence supporting common-law trademark rights); Chicago Restaurant & Entertainment Guide, Inc. v. Polat, FA 1310901 (Nat. Arb. Forum Apr. 22, 2010) (same).
TimeWorks, LLC v. Shadwan Swed, FA 1519030 (Nat. Arb. Forum Oct. 15, 2013).
In this case, Complainant has offered no evidence of consumer or media recognition of its claimed marks as distinctive identifiers. Furthermore, Complainant’s claimed marks correspond to common dictionary words: “tags” is obviously a common word, and according to Complainant’s website it stands for “Trophies, Awards, Gifts and Specialties”—generic terms for the goods that Complainant offers for sale. It is also telling that Complainant’s website makes no reference to a claim of trademark rights, although it does contain a copyright notice.
Under the circumstances, the Panel finds that Complainant has failed to meet its burden of showing that it has rights in a relevant mark for purposes of paragraph 4(a)(i) of the Policy.
As the Panel’s findings with regard to the first element required by the Policy are dispositive of the present matter, the Panel declines to address the remaining elements.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <tagstrophy.com> and <tagsawards.com> domain names REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: February 26, 2015
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