Raptor Technologies, LLC v. sajima tan
Claim Number: FA1609001693640
Complainant is Raptor Technologies, LLC (“Complainant”), represented by John P. McCormick of Fish & Richardson P.C., Massachusetts, USA. Respondent is sajima tan (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <raptorreunification.com>, registered with TurnCommerce, Inc. DBA NameBright.com.
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 13, 2016; the Forum received payment on September 13, 2016.
On September 15, 2016, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <raptorreunification.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com 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 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 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@raptorreunification.com. Also on September 15, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 11, 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. 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
Policy ¶ 4(a)(i)
Complainant has common law rights in the RAPTOR mark dating back to 2003. Complainant has rights in the GUARDIAN REUNIFICATION, PARENT REUNIFICATION, and STUDENT REUNIFICATION marks (“REUNIFICATION family marks”) through their registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,023,274, registered on August 16, 2016 for the GUARDIAN REUNIFICATION mark; Reg. No. 5,023,272, registered on August 16, 2016 for the PARENT REUNIFICATION mark; and Reg. No. 5,023,273, registered on August 16, 2016 for the STUDENT REUNIFICATION mark). The <raptorreunification.com> domain name is confusingly similar to the RAPTOR mark and REUNIFICATION marks because the domain name combines portions from both sets of marks along with the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <raptorreunification.com> domain name as the available WHOIS information lists “sajima tan” as Registrant and because Respondent is not affiliated with Complainant or otherwise permitted to use Complainant’s marks. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is not being used.
Policy ¶ 4(a)(iii)
Respondent registered and uses the <raptorreunification.com> domain name in bad faith because Respondent registered the domain name only five days after Complainant filed a trademark application for the RAPTOR REUNIFICATION mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Raptor Technologies, LLC (“Complainant”), represented by John P. McCormick of Fish & Richardson P.C., Massachusetts, USA.
Respondent is sajima tan (“Respondent”), Japan. The Panel notes that the <raptorreunification.com> domain name was registered on or about August 23, 2016.
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.”).
Complainant does not claim to own a trademark registration for the RAPTOR mark. However, panels have found that registration is not required to satisfy Policy ¶ 4(a)(i) if the complainant can establish common law rights. 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 common law rights in the RAPTOR mark dating back to 2003. In order to have common law rights, a complainant must establish secondary meaning. Relevant evidence of secondary meaning can include length of use of a mark, owning an identical domain name, and media recognition. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as March 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.). Complainant has provided evidence of its use of the RAPTOR mark through screenshots of its own website at <raptortech.com>, and a trademark application with the USPTO for the RAPTOR mark, listing the first use in commerce as September 16, 2003.
Complainant claims rights in the REUNIFICATION family marks through their registration with the USPTO (Reg. No. 5,023,274, registered on August 16, 2016 for the GUARDIAN REUNIFICATION mark; Reg. No. 5,023,272, registered on August 16, 2016 for the PARENT REUNIFICATION mark; and Reg. No. 5,023,273, registered on August 16, 2016 for the STUDENT REUNIFICATION mark). Complainant has provided evidence of these registrations.
The Panel finds that Complainant holds rights in the marks noted as registered above. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
The Panel finds Complainant has NO rights in REUNIFICATION as a mark alone, or in connection with the mark RAPTOR. Complainant claims common law rights in the disputed domain name based on its own domain name and website. Both of those feature the word mark RAPTOR used in connection with the word “Technologies”. The website domain is <raptortech.com> which also leads one to associate tech with technologies. Complainant has NEVER used the mark RAPTOR REUNIFICATION and registration of the domain name <raptortech.com>, does not provide any common law rights to that mark. Complainant recently filed a USA trademark application for the RAPTOR REUNIFICATION mark based on its intent to use the mark in the future.
Further, Complainant correctly notes that common law rights are dependent on proof of secondary meaning. While registration and proper use of a domain name may provide some potential evidence in favor of secondary meaning it is not enough by itself. A domain name registration alone establishes no protectable trademark rights. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Secondary meaning generally requires the claimant indicate length and amount of sales under the trademark, the nature and extent of advertising, and consumer association through surveys and media recognition. Complainant’s evidence here is lacking in all the necessary details. Complainant has no REUNIFICATION mark nor does Complainant have a registration for RAPTOR. Complainant’s trademark application for RAPTOR was filed in January of this year, and besides the self-serving date of first use stating 2003, there is nothing in the record to indicate continuous use of the mark since that time, or in any manner that has caused the public to associate that mark with the Complainant. The Panel finds that Complainant has NOT established common law rights dating back to 2003 for the mark RAPTOR.
The Complainant has NOT proven this element.
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (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); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (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)).
The Panel declines to analyze this element.
The Panel declines to analyze this element.
As the Complainant has failed to establish 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 <raptorreunification.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: October 25, 2016
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