Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation
Claim Number: FA1609001693876
Complainant is Record Connect, Inc. (“Complainant”), represented by Paul Godfread of Godfread Law Firm, P.C., Minnesota, USA. Respondent is Chung Kit Lam / La-Fame Corporation (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <recordconnect.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2016; the Forum received payment on September 15, 2016.
On September 16, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <recordconnect.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 September 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 2016 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@recordconnect.com. Also on September 22, 2016, 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 October 12, 2016.
On October 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has common law rights in the RECORD CONNECT mark dating back to its first use in commerce in 2012. Respondent’s <recordconnect.com> domain name is identical to the RECORD CONNECT mark.
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <recordconnect.com> domain name as the available WHOIS information lists “Chung Kit Lam / La-Fame Corporation” as Registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website constitutes an inactive website.
Policy ¶ 4(a)(iii)
Respondent uses the <recordconnect.com> domain name in bad faith because it attempts to sell the domain name for a highly inflated sum, Respondent has demonstrated a pattern of bad faith registration and use of domain names through prior UDRP decisions found against it, and the resolving website constitutes an inactive website.
B. Respondent
Policy ¶ 4(a)(i)
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii)
Respondent uses the <recordconnect.com> domain name for the bona fide offering of information for products and services including and related to connecting customers to suppliers of various electronic devices.
Policy ¶ 4(a)(iii)
Respondent uses the <recordconnect.com> domain name to operate a website focusing on the expansion of its business operations into niche targeting for products and services related to various electronic devices and the connection of customers to suppliers. Any delay in the activity of the website was due to the process required to maintain certain quality levels for the associated suppliers. Respondent’s registration of the <recordconnect.com> domain name in March/April 2009 predates Complainant’s first use of the RECORD CONNECT mark. Any purchase offers received by Respondent were conducted through a website parking service, and so the identity of any potential buyer was unknown to Respondent.
Complainant is Record Connect, Inc. of Saginaw, MI, USA. Complainant claims to have used the mark RECORD CONNECT since 2012 and further claims to have continuously used the mark since that time in connection with the provision of goods and services in its business of record management, indexing, information releases, and related services. Complaint filed for a USA registration for the mark with the USPTO on June 15, 2016. Complainant incorporated its business in Michigan on October 23, 2012.
Respondent is Chung Kit Lam / La-Fame Corporation of Hong Kong. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent claims to have back ordered the disputed domain in March of 2009 and was awarded the domain name when it became available on April 4, 2009. Complainant’s WHOIS information indicates that the domain name was last updated on the April 4, 2009 date and the Respondent is listed as the contact person. The domain name was created on or about February 21, 2007.
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 does not claim to own a registration of the RECORD CONNECT mark with any trademark registration agency. However, prior panels have agreed that when a complainant can demonstrate common law rights, Policy ¶ 4(a)(i) is satisfied. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Complainant claims to have common law rights in the RECORD CONNECT mark dating back to its first use in commerce in 2012. To have common law rights, a complainant must demonstrate that a mark has acquired secondary meaning. Relevant evidence of secondary meaning can include sales figures, length of use of a mark, and expeneditures in maintaining the mark. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant provided the following evidence to demonstrate common law rights in the mark: A sworn affidavit indicating use of the RECORD CONNECT mark since 2012, with annual sales under the mark of approximately $2,440,000.00 and annual marketing expenses of about $36,000.00; A display of the landing page of its <recordconnectinc.com> website; and information regarding Complainant’s application to the United States Patent and Trademark Office (“USPTO”) for registration of the RECORD CONNECT mark. The Panel finds that Complainant has common law rights in the RECORD CONNECT mark, but it is unclear how far those rights date back. Although Complainant provides sales, advertising, and marketing figures, Complainant simply states that consumers have come to know of Complainant by the mark. No surveys or other proof of primary association by the public is offered. Mere self-serving testimony without proof of secondary meaning is inadequate to support a finding of common law rights in a mark. However, the Panel finds that is unnecessary to determine when Complainant’s exact rights arise in this matter as it finds that Respondent has rights and legitimate interest in the domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has NOT met this burden.
Complainant claims to have common law rights dating back to its first use in 2012. Complainant’s own WHOIS evidence supports Respondent’s assertion that it registered the domain name in 2009 thus predating Complainant’s rights in the mark. Respondent maintains that it uses the <recordconnect.com> domain name, as well as the related subdomain <chsim.recordconnect.com>, for the bona fide offering of information for products and services including and related to connecting customers to suppliers of various electronic devices including record devices, connect devices for tablets, mobile phones TVs, power supplies, and other similar electronic devices. Respondent has provided a reference to <72k.org>, which it claims to have created as a clone of the <recordconnect.com> domain name’s website in order to ensure that such content can be displayed in this proceeding. The Panel finds Respondent’s evidence and purported use supportive of Respondent’s assertion that it is using the <recordconnect.com> domain name to make a bona fide offering of goods or services. See Burke Inc v. Leader Techs. LLC, FA 102822 (Forum Mar. 29, 2002) (finding that the respondent’s use of the disputed domain name to offer non-competing goods and services in commerce, starting twelve months prior to the complainant’s registration, was evidence that the respondent had rights or legitimate interests in the disputed domain name); see also Workshop Way, Inc. v. Harnage, FA 739879 (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). The Panel here finds that Respondent has rights and legitimate interest in the disputed domain name.
The Complainant has NOT proven this element.
Since the Panel concludes that Respondent has rights or legitimate interests in the <recordconnect.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Complainant has NOT proven this element.
As the Complainant has NOT established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <recordconnect.com> domain name be REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: Nov. 3, 2016
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