DECISION

 

Zelig AI, LLC v. dong xuyan

Claim Number: FA2410002120196

 

PARTIES

Complainant is Zelig AI, LLC ("Complainant"), United States, represented by Matthew D. Witsman of Foley & Lardner LLP, United States. Respondent is dong xuyan ("Respondent"), Cambodia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <valusync.com>, registered with Gname.com Pte. Ltd.

 

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 October 13, 2024; Forum received payment on October 13, 2024.

 

On October 14, 2024, Gname.com Pte. Ltd. confirmed by email to Forum that the <valusync.com> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 16, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 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@valusync.com. Also on October 16, 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 November 6, 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 has used the VALUSYNC for use in connection with financial services since at least as early as May 2023. On April 22, 2024, Complainant filed an application with the U.S. Patent & Trademark Office to register the VALUSYNC mark; that application is currently pending. Complainant owns the domain name <valusyncit.com> and uses it to provide information regarding its services. Complainant asserts that the VALUSYNC mark is associated exclusively with Complainant.

 

The disputed domain name <valusync.com> was originally registered in May 2013. The name is registered to Respondent, although Respondent's identity is redacted from the public whois record. Complainant states that ownership of the domain name changed on multiple occasions and alleges that it was acquired by Respondent on or about May 4, 2024. Complainant states that the website associated with the domain name changed at that time to explicit and obscene content, and that more recently the website has been deactivated. Complainant states that Respondent is not commonly known by the domain name and is not authorized to use Complainant's mark.

 

Complainant contends on the above grounds that the disputed domain name <valusync.com> is confusingly similar to its VALUSYNC 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. Because this finding is dispositive, the Panel declines to enter findings as to the other elements set forth in the Policy. In addition, for the reasons set forth below, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

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 Aug. 30, 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 does not own a trademark registration for VALUSYNC; its application is currently pending before the United States Patent & Trademark Office. A pending application does not confer sufficient rights to satisfy paragraph 4(a)(i) of the Policy. See Aggressor Adventures, LLC v. web master / Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace***, FA 2095215 (Forum May 24, 2024); Impossible Kicks Holding Co., Inc. v. DMT Namecheap, FA 2025781 (Forum Jan. 28, 2023). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.1.4. Complainant therefore must rely upon a claim of common law trademark rights.

 

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.

 

To support a claim of common law trademark rights, the Complainant should present strong and serious evidence of constant use by the Complainant and recognition of the trademark from the customers of the associated goods or services.

 

Proof of common law trademark rights cannot be based on conclusory allegations. A Complainant will have failed to establish common law rights in its mark where it makes mere assertions of such rights, which are insufficient without accompanying evidence to demonstrate that the public identifies a Complainant's mark exclusively or primarily with a Complainant's products.

 

UDRP Perspectives on Recent Jurisprudence, supra, § 1.2.

 

Complainant has failed to support a claim of common law trademark rights with evidence of acquired distinctiveness. The Complaint does not indicate the volume of sales under the claimed mark, the nature or extent of advertising, or the degree of public recognition. Furthermore, Complainant's assertion that it has been using the mark since May 2023 is contradicted by the fact that its trademark application was filed in April 2024 on an "intent-to-use" basis (i.e., basis 1(b), 15 U.S.C. § 1051(b)), meaning that Complainant was asserting an intention to commence use of the putative mark in the future. See, e.g., Aggressor Adventures, LLC, supra (rejecting claim of common law rights where trademark application was filed on intent-to-use basis); Neal & Massy Holdings Ltd. v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (treating an intent-to-use application as an admission that the applicant is not currently using the mark in commerce).

 

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

 

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., Aggressor Adventures, LLC, supra (declining to address rights or legitimate interests and bad faith in similar circumstances); Impossible Kicks Holding Co., Inc., supra (same).

 

Reverse Domain Name Hijacking

Under Paragraph 1 of the Rules, "Reverse Domain Name Hijacking" (RDNH) is defined as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Paragraph 15(e) of the Rules provides that if "the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."

 

Where a Complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy, a finding of RDNH may be appropriate. See, e.g., Gapardis Health & Beauty, Inc. v. Frantz Boulos, FA 1917653 (Forum Nov. 23, 2020). See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 4.16 (setting forth reasons for finding RDNH); UDRP Perspectives on Recent Jurisprudence, supra, § 4.2 (same).

 

Complainant submitted no evidence of the acquired distinctiveness required to support a claim of common law trademark rights. The only evidence relevant to Complainant's use of the putative mark is a screenshot of Complainant's website, and a USPTO trademark status page indicating that Complainant has not yet commenced use of its mark in commerce. Under the circumstances, and noting that Complainant is represented by professional trademark counsel, the Panel concludes that Complainant or its counsel must have known that it did not have a colorable claim under the Policy. See Hallmark Licensing, LLC & Hallmark Cards, Inc. v. Privacy Administrator / Anonymize, Inc., FA 1941032 (Forum June 1, 2021) (Levine, dissenting in part) (noting consensus view that legal counsel are expected to have working knowledge of UDRP jurisprudence).

 

The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

DECISION

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

 

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

 

 

 

David E. Sorkin, Panelist

Dated: November 6, 2024