DECISION

 

Sysnet North America, Inc. v. Jesus Jesus

Claim Number: FA2407002107324

 

PARTIES

Complainant is Sysnet North America, Inc. ("Complainant"), United States, represented by Jessica S. Sachs of Harness, Dickey & Pierce, PLC, United States. Respondent is Jesus Jesus ("Respondent"), United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vikimgcloud.com>, registered with NameCheap, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 22, 2024; Forum received payment on July 22, 2024.

 

On July 22, 2024, NameCheap, Inc. confirmed by email to Forum that the <vikimgcloud.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 July 24, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2024 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@vikimgcloud.com. Also on July 24, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On August 14, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it uses the VIKINGCLOUD mark in connection with cybersecurity and compliance products and services. Complainant has pending applications to register VIKINGCLOUD with the United States Patent & Trademark Office, filed in January 2022, and asserts common law rights arising from extensive and public use since at least as early as 2022. Complainant owns the domain name <vikingcloud.com>, which it uses for its official website.

 

The disputed domain name <vikimgcloud.com> was registered in July 2024. The name is registered in the name of a privacy registration service on behalf of Respondent. The domain name does not resolve to a website. Complainant states that it is being used to impersonate Complainant in phishing emails sent to Complainant's customers and vendors seeking to divert payments, and provides heavily redacted evidence of one such attempt. Complainant states that Respondent is not commonly known by the domain name and is not authorized or licensed to use Complainant's mark.

 

Complainant contends on the above grounds that the disputed domain name <vikimgcloud.com> is confusingly similar to its VIKINGCLOUD mark; that Respondent lacks 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.

 

FINDINGS

The Panel finds that Complainant has not demonstrated rights in a relevant trademark.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; UDRP Perspectives on Recent Jurisprudence, §§ 0.2, 0.8 (updated July 24, 2024), available at https://udrpperspectives.org/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

Complainant contends that the disputed domain name <vikimgcloud.com> is confusingly similar to the VIKINGCLOUD mark in which Complainant claims rights.

 

Complainant does not own a trademark registration; its applications to register VIKINGCLOUD are currently pending before the United States Patent & Trademark Office. A trademark registration is not necessary to establish rights under Paragraph 4(a)(i), provided the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See, e.g., Hobby Fun, LLC v. Savannah Schellenschlager-Damer / The Garden Savvy, FA 2083049 (Forum Mar. 20, 2024) (declining to find common law rights in GARDEN SAVVY); Impossible Kicks Holding Co., Inc. v. DMT Namecheap, FA 2025781 (Forum Jan. 28, 2023) (declining to find common law rights in IMPOSSIBLE KICKS).

 

A complainant relying on rights arising solely at common law has a fairly steep evidentiary burden under the Policy.

 

To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services.

 

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

 

. . . .

 

Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.

 

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3. Accord UDRP Perspectives on Recent Jurisprudence, supra, §§ 1.1, 1.2, 1.3.

 

Use merely as a trade name is insufficient, absent evidence that the name also functions as a trademark. See, e.g., Bolton & Menk, Inc. v. Chaiming Ming, FA 1963601 (Forum Oct. 18, 2021) (declining to find common law rights in BOLTON & MENK, used by complainant for more than 70 years, where evidence of use consisted of complainant's own letterhead and website, accompanied by vague and conclusory allegations regarding public recognition).

 

Complainant has failed to support its claim of common law trademark rights with evidence that its putative mark has become a distinctive identifier that consumers associate with Complainant's goods or services. Complainant has provided the Panel with a printout of its own website and an unsubstantiated claim that Complainant and its subsidiaries are "trusted by 4 million customers." However, Complainant has provided little or no evidence related to the mark itself, including the nature of its use, sales volumes, advertising expenditures, or public recognition. The fact that Respondent appears to be targeting and attempting to create confusion with Complainant is relevant but not sufficient to demonstrate the trademark rights required by Paragraph 4(a)(i) of the Policy. See, e.g., Impossible Kicks Holding Co., Inc. v. DMT Namecheap, supra (declining to find common law rights notwithstanding use of putative mark to pass off as complainant and sell similar products); Alliant Energy Corp. v. Billy Wood, FA 1959495 (Forum Sept. 13, 2021) (declining to find common law rights notwithstanding use of putative mark to impersonate complainant for fraudulent purposes).

 

The Panel therefore finds that Complainant has not proved that it has the requisite rights in a relevant mark for purposes of Paragraph 4(a)(i) of the Policy.

 

As the Panel's conclusion on the first element is dispositive of the present dispute, the Panel declines to address the other elements set forth in Paragraph 4(a) of the Policy. See, e.g., Hobby Fun, LLC v. Savannah Schellenschlager-Damer / The Garden Savvy, supra (declining to address rights or legitimate interests and bad faith in similar circumstances); Impossible Kicks Holding Co., Inc. v. DMT Namecheap, supra (same); Bolton & Menk, Inc. v. Chaiming Ming, supra (same).

 

DECISION

Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <vikimgcloud.com> domain name REMAIN WITH Respondent.

 

 

 

David E. Sorkin, Panelist

Dated: August 14, 2024