Formation Capital, LLC v. VistaPrint Technologies Ltd
Claim Number: FA1604001672252
Complainant is Formation Capital, LLC ("Complainant"), represented by Martin W. Hayes of Williams Mullen, Virginia, United States. Respondent is VistaPrint Technologies Ltd ("Respondent"), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <forrnationcapital.com>, registered with Tucows Domains 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 Forum electronically on April 27, 2016; the Forum received payment on April 27, 2016.
On April 27, 2016, Tucows Domains Inc. confirmed by email to the Forum that the <forrnationcapital.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 April 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2016 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@forrnationcapital.com. Also on April 28, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is an investment management firm focused on senior housing and care. Complainant has over $4 billion of managed investments in healthcare real estate in at least 35 states. Complainant states that it has used the mark FORMATION CAPITAL in connection with these services since approximately 1998. Complainant has applied for a federal registration of the putative mark, and claims rights arising from its extensive and continuous use. Complainant states that it "has spent a substantial sum marketing [its] services throughout the world," and that its "unique brand has become widely recognized."
Respondent registered the disputed domain name <forrnationcapital.com> on or about March 28, 2016. The domain name resolves to a placeholder website that links to Respondent's main site. Complainant states that Respondent is not licensed or otherwise authorized to use Complainant's mark, and is not commonly known by the disputed domain name. Complainant alleges that Respondent is using the disputed domain name to engage in fraudulent activity, having attempted to impersonate Complainant's CEO in an email message to an employee of Complainant requesting a wire transfer. Complainant further alleges that Respondent has a history of bad faith domain name registrations, having lost numerous previous proceedings under the Policy. On these grounds Complainant contends that the disputed domain name is confusingly similar to Complainant's mark; that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
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(f), 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 (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).
Complainant has applied to register the FORMATION CAPITAL mark, and claims to own what the Panel presumes to be common law rights in the mark. A pending application to register a mark does not give rise to trademark rights for purposes of the Policy. See MCorelab Inc. v. Melissa Domain Name Services / Shanshan Huang, FA 1652968 (Forum Jan. 18, 2016). Yet aside from the conclusory statements in the Complaint itself, Complainant has offered no evidence of consumer or media recognition of its claimed mark as a distinctive identifier. Furthermore (as the U.S. Patent and Trademark Office noted in its initial refusal of Complainant's application to register the mark), the claimed mark corresponds to common dictionary words that are descriptive of Complainant's services. And Complainant's own website does not even include a claim of trademark rights in FORMATION CAPITAL, apart from a vague boilerplate claim to "[a]ll copyrights, trademarks, logos, service marks, trade names, or other intellectual property displayed on, or used in conjunction with this Website." See, e.g., WMS Group, Inc. v Molly Jenkins / Brandz Agency Inc., FA 1601220 (Nat. Arb. Forum Feb. 26, 2015) (finding insufficient evidence of common-law trademark rights under similar circumstances).
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 <forrnationcapital.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: May 24, 2016
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