Ontel Products Corporation v. Arctic Ultra / Agile Tech
Claim Number: FA1810001812310
Complainant is Ontel Products Corporation (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, Washington DC, USA. Respondent is Arctic Ultra / Agile Tech (“Respondent”), Lithuania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arcticairultra.com>, registered with Amazon Registrar, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 17, 2018; the Forum received payment on October 17, 2018.
On October 22, 2018, Amazon Registrar, Inc. confirmed by e-mail to the Forum that the <arcticairultra.com> domain name is registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the name. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, 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 October 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 2018 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@arcticairultra.com. Also on October 29, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2018 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in ARCTIC AIR and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name 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. Complainant uses the name ARCTIC AIR in connection with portable personal cooling devices;
2. Complainant has filed numerous trademark applications for ARCTIC AIR including, for example, United States Patent and Trademark Office (“USPTO”) App. Serial No. 87/644,390, filed on October 13, 2017, none of which have matured to registration;
3. the disputed domain name was registered on August 8, 2018 and resolves to a website promoting the sale of portable personal cooling devices; and
4. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
The Complaint fails on this first limb of the Policy. Paragraph 4(a)(i) requires Complainant to show it has rights in a trademark and that the disputed domain name is identical or confusingly similar to that trademark. Here, Complainant has not shown trademark rights.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[i]
The Complaint evidences a number of pending applications but none which is registered. In particular, it claims trademark rights in ARCTIC AIR based upon Complainant’s trademark application with the USPTO which was filed before the disputed domain name was registered.
A pending trademark application is, by itself, insufficient to establish rights in a trademark under this aspect of the Policy.[ii] The prior filing date is of no consequence unless the trademark has matured to registration.
Complainant may nonetheless show common law trademark rights through evidence of secondary meaning. In that case it must satisfy a number of criteria set out in earlier UDRP cases and summarized, for example, at http://www.wipo.int/amc/en/domains/search/overview3.0/#item13.
In this case Complainant does not specifically assert common law rights but states that ARCTIC AIR is well known by reason of sales of marked goods from Complainant’s website resolving from the <buyarcticair.com> domain name. The evidence is not particularized and does not establish common law rights.
The Panel therefore finds that Complainant has failed to establish the requirements of paragraph 4(a)(i) of the Policy.
No findings required.[iii]
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 <arcticairultra.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: November 22, 2018
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[ii] See, for example, Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”).
[iii] See, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) 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); Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) 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).
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page