Alliance Member Services, Inc. v. Jiang Li
Claim Number: FA2111001973871
Complainant is Alliance Member Services, Inc. (“Complainant”), represented by Christopher Reed of Alliance Member Services, Inc., California, USA. Respondent is Jiang Li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <insurancefornonprofit.org>, registered with Xin Net Technology Corporation.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 18, 2021; the Forum received payment on November 18, 2021.
On November 21, 2021, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <insurancefornonprofit.org> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 November 29, 2021, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of December 20, 2021 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@insurancefornonprofit.org. Also on November 29, 2021, the Chinese and English language 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 December 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
The Panel notes the Chinese language Registration Agreement. Under Rule 11(a) the language of these proceedings is therefore Chinese. Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request.
In considering similar requests, UDRP panels have taken account of factors which indicate a respondent’s proficiency with the English language (see, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006)). Here, Complainant submits that Respondent is capable of understanding English based on the facts that the domain name combines English language words and that the resolving website is in English “targeting English-language customers, which indicates the intent of the Respondent to engage in business in English.”
The Panel notes that the preponderance of UDRP decisions have treated these arguments as enough to show a capacity in English and so the Panel determines that the proceedings should continue in English.
A. Complainant
Complainant asserts rights in the domain name, <insurancefornonprofits.org> through extensive use that name in association with its business and registered trademarks and submits that the disputed domain name is confusingly similar to its <insurancefornonprofits.org> domain name.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons which follow, the Complaint fails on the first limb of the Policy which requires proof of trademark rights. The only factual finding pertinent to the decision in this case is that Complainant is an insurance provider for non-profit organisations, a matter of relevance to the assessment of trademark rights.
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."
Albeit that no Response has been filed, paragraph 4(a) of the Policy nonetheless 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) does not distinguish between registered and unregistered trademark rights. The Complaint itself is not explicit as to whether it relies on registered and/or unregistered marks and so the Panel has examined both possible bases.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant provides proof of its registration of certain trademarks with the USPTO, a national trademark authority. Those trademarks are:
1. ALLIANCE MEMBER SERVICES
2. ALLIANCE OF NONPROFITS FOR INSURANCE
3. NATIONAL ALLIANCE OF NONPROFITS FOR INSURANCE
4. NONPROFITS INSURANCE ALLIANCE
5. NONPROFITS INSURANCE ALLIANCE OF CALIFORNIA
The Panel notes that four of the five trademarks contain the word, “insurance”, which the USPTO has subjected to a disclaimer of exclusivity. Moreover, all the marks contain essentially descriptive, non-distinctive terms and the narrow monopoly which might reside in each registration is limited to the particular assembly of the terms, none of which in the Panel’s finding is confusingly similar to the disputed domain name.
Complainant states that it “has filed for a trademark on the domain name insurancefornonprofits.org.” There is no evidence of that application but, in any event, it is well established that, subject to what follows, only registered trademarks provide per se evidence of trademark rights.
A governmental registration is not required if a complainant can establish common law rights (see, for example, Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018)). Common law trademark rights may be established through use and public recognition of a putative mark such that it has come to acquire secondary meaning (see, for example, Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) holding that complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”; Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”; Copper Wire Stripper Limited v. Joe Williams / BLUEDOGINTERNATIONALINC, FA 1604460 (Forum Apr. 4, 2015) finding complainant failed to establish secondary meaning where no evidence was provided with respect to sales under the mark and money spent promoting the mark; CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) finding complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant. Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.”).
These and many other similar decisions under the Policy are reflected by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview”), which asks at paragraph 1.3: What does a complainant need to show to successfully assert unregistered or common law trademark rights? In answer, the consensus opinion of UDRP panelists is that:
“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. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
In this case, Complainant’s submission is that its:
“trademarks all together have been used in conjunction with the domain name insurancefornonprofits.org for two decades. … These businesses have all used the domain name insurancefornonprofits.org for all of their email addresses and electronic communications since sometime prior to 2002. …Because the businesses represented by [the] trademarks all use the domain inurancefornonprofits.org for their primary website presence and email addresses, there is a strong brand recognition and association between these trademarks and the domain name insurancefornonprofits.org, especially among those businesses' more than 22,000 member nonprofit organizations and their staff in 32 US states and the District of Columbia.”
Complainant is an insurance provider for non-profit organisations. Within that context, all the words composing its trademarks and its domain name are of nil, or very little, distinctive value. They are wholly descriptive of Complainant’s business and/or its services. As such, Complainant bears a greater onus to present evidence of acquired distinctiveness/secondary meaning but there is no actual evidence in support of a claim to any common law trademark, least of all a mark corresponding to the domain name used by Complainant. The Complaint does not provide proof of public recognition of term, “insurancefornonprofits” as a common law trademark, still less a reputation in that descriptive expression.
The Panel finds that Complainant has failed to show unregistered trademark rights of any kind (see, for example, The Mortgage Link, Inc. v. Maurice Hicks, Claim Number: FA2108001961916, Sept 27, 2021). Accordingly, the Panel finds that Complainant has not established the first element of the Policy.
No findings required (see, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) 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; Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) 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)).
No findings required for the reasons just given.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <insurancefornonprofit.org> domain name REMAIN WITH Respondent.
Debrett G Lyons, Panelist
Dated: December 29, 2021
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