SOS Technologies, Inc. v. John McKeown
Claim Number: FA1109001409623
Complainant is SOS Technologies, Inc. (“Complainant”), represented by Herb R. Kraft, California, USA. Respondent is John McKeown (“Respondent”), Ireland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sosonlinesite.com>, registered with TUCOWS Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Sir Ian Barker QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2011; the National Arbitration Forum received payment on October 3, 2011.
On September 30, 2011, TUCOWS Inc. confirmed by e-mail to the National Arbitration Forum that the <sosonlinesite.com> domain name is registered with TUCOWS Inc. and that Respondent is the current registrant of the name. TUCOWS Inc. has verified that Respondent is bound by the TUCOWS 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 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2011 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@sosonlinesite.com. Also on October 12, 2011, 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.
A timely Response was received and determined to be complete on November 1, 2011.
On November 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker QC as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a California corporation that supplies local and online offsite back-up, file sharing and multi-media albums under the name SOS Online Backup. It has been operating since 2001. The operations have been reviewed favourably in several trade publications. In particular, it received consecutive PC Magazine Editor’s Choice Awards. It does not have a registered trademark.
Email correspondence was exhibited which shows that the Respondent – who is resident in the Republic of Ireland – applied on June 28, 2011 to the Complainant, on behalf of the company in which he was a shareholder, PC Innovations Ltd (PCI), to be a reseller in Ireland and the United Kingdom. The Complainant replied that any ownership and use of the SOS Online Backup brand in any form was not permissible and a violation of ICANN Rules. PCI had registered the domain names <sosonlinebackup.ie> and <sosonlinebackup.co.uk>.
On July 27, 2011, the Respondent, through PCIL, replied to the effect that the Respondent would retain ownership of the above domain names. He pointed out that SOS Online Backup “is not trademarked in either the European Union or the United Kingdom”. PCIL was prepared to transfer ownership of the “ie” and “uk” domain names in return for a “Platinum Package” including “Pulse”.
The Respondent sent a further email (undated) discontinuing any business relationship but still offering to sell the Irish and UK domain names to the Complainant.
The disputed domain name was registered after the correspondence referred to above began. According to the Complainant, registration of the disputed domain name was made for the Respondent to become a reseller.
The Respondent has never been known by any name similar to the disputed domain name. The Respondent tried to use the fame and use the disputed domain name to resell services. The Respondent has held the English and Irish domain names in hostage mode. The Respondent’s activities trade upon the goodwill and reputation of the Complainant.
B. Respondent
The Complainant does not have a registered trademark: nor is it able to demonstrate that it is entitled to a common law trademark. The registrant of the disputed domain name is one of the directors of PCIL. Each of the directors of that company had his own company for over 10 years, providing computer-related services. They joined forces to provide backup services to medium and small-sized companies in Ireland and the United Kingdom.
The Complainant has not shown that it is well-known in Ireland or the United Kingdom. Its name did not appear in research conducted by the Respondent, nor is it listed in the first 30 page of <google.co.uk> if one searches “online backup”.
The Complainant can refer to 50 products but with no relevance to online backup. There is no confusion of the public. The Complainant was made aware of the Respondent before its negotiations with the Complainant began of the Respondent’s ownership of the English and Irish domain names.
The Complainant is not known as an SOS Online site and is trying to claim anything related to its trading name. There are other “sos” related domain names available for the Complainant to register. The Respondent offered the English domain and the disputed domain name in an attempt to try and resolve the issue. The Complainant has taken two months’ fee from PCIL but has not delivered software.
PCIL has registered a trademark in the United Kingdom for “SOS Online Backups”. The registration date is July 14, 2011.
The Complainant has not established that it has sufficient trademark rights and therefore fails under Paragraph 4(a)(i) of the Policy.
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.
A helpful summary of the position with unregistered trademarks is found in the WIPO Panel Views on Selected UDRP Questions (Second Edition) (“WIPO Overview”).
1.7 What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?
Consensus view: 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 also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. 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.
In this case, the Complainant has given little or no evidence as to the acquisition of a secondary meaning for the alleged mark. The Overview indicates matters such as the length and amount of sales under the mark, the nature and extent of advertising and consumer surveys are often what is required in order to substantiate a mark. All the Complainant has shown is recognition in specialized media where the Complainant’s activities have been well-reviewed.
The alleged common law trademark is composed of commonly used words such as “site” and “online”, plus the universally-understood expression “sos”. As was noted in the WIPO Overview, there may be a greater onus on a complainant to present compelling evidence of secondary meaning and distinctiveness when the unregistered mark is comprised of generic words or expressions. The Complainant is not required to show that it has established a common law trademark in the United Kingdom or Ireland. For the purposes of a Paid 4(a)(i) of the Policy, it would have been sufficient if it had been able to assemble evidence to the requisite level of proof of a common law trademark in the United States. However, the evidence falls short of that.
Therefore Paragraph 4(a)(i) on the Policy has not been established and in those circumstances it becomes unnecessary for the Panel to consider the remainder of the allegations.
The Panel therefore concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sosonlinesite.com> domain name REMAIN WITH Respondent.
Hon. Sir Ian Barker QC, Panelist
Dated: November 24 , 2011
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