When you claim your mark has become distinctive but it hasn’t, filing a rushed UDRP won’t get you the domain name.
Impossible Kicks Holding Company, Inc. filed a UDRP against the registrant of the domain name ImpossibleKick.com. The Respondent did not respond, but the sole panelist at the Forum (NAF) pointed out that the Complainant’s mark has not become distinctive.
The mark in question is IMPOSSIBLE KICKS, related to a marketplace for reselling sports shoes and other apparel. That trademark registration application is still pending at the USPTO.
The Complainant has a pending trademark application and relied on their own claims of common law rights to a mark that’s not well-known. Ergo, the panelist delivered a decision favoring the Respondent, denying them the domain’s transfer.
Impossible Kicks Holding Company, Inc. v. DMT Namecheap
Claim Number: FA2212002025781
PARTIES
Complainant is Impossible Kicks Holding Company, Inc. (“Complainant”), United States, represented by Russell Anderson of Pullman & Comley, LLC, United States. Respondent is DMT Namecheap (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is impossiblekick.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 December 29, 2022; Forum received payment on December 29, 2022.
On December 29, 2022, NameCheap, Inc. confirmed by email to Forum that the impossiblekick.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 January 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2023 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@impossiblekick.com. Also on January 3, 2023, 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 January 27, 2023, 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 owns several retail stores in the United States and an online store, where it sells designer shoes, clothing, and other apparel. Complainant has used the IMPOSSIBLE KICKS name in connection with these stores since 2020. Complainant has applied to register IMPOSSIBLE KICKS as a trademark with the United States Patent & Trademark Office. Complainant also asserts common law rights in IMPOSSIBLE KICKS based upon its use in Complainant’s literature and advertising and in the domain name impossiblekicks.com that Complainant uses for its primary website.
The disputed domain name impossiblekick.com was registered in November 2022. The domain name is registered in the name of a privacy registration service on behalf of Respondent. It is being used for a website entitled IMPOSSIBLE KICK, with the name displayed in virtually the same stylized form as that used by Complainant on its own website. The website offers products similar to those sold by Complainant, but at “implausibly” discounted prices. Complainant alleges that Respondent is either selling knockoff products or engaging in other questionable business practices. Complainant notes that the physical address that appears on Respondent’s website is actually the address of a different entity that has no connection to Respondent, and asserts that the same address also appears on other fraudulent websites. 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 impossiblekick.com is confusingly similar to its IMPOSSIBLE KICKS 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 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/; 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 impossiblekick.com is confusingly similar to the IMPOSSIBLE KICKS mark in which Complainant claims rights.
Complainant does not own a trademark registration; its application to register IMPOSSIBLE KICKS is 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., Bartko Zankel Bunzel & Miller v. Perfect Privacy, LLC / Jan Bartko, D2022-0043 (WIPO Mar. 17, 2022) (declining to find common law rights in BARTKO); Bolton & Menk, Inc. v. Chaiming Ming, FA 1963601 (Forum Oct. 18, 2021) (declining to find common law rights in BOLTON & MENK); SundaeSwap Labs, Inc. v. Tech In, FA 1959736 (Forum Sept. 14, 2021) (declining to find common law rights in SUNDAESWAP); Brime, LLC v. Jack Zhang, FA 1945815 (Forum July 6, 2021) (declining to find common law rights in BRIME); Karma International, LLC v. David Malaxos, FA 1822198 (Forum Feb. 15, 2019) (declining to find common law rights in KARMA).
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.
Complainant has failed to support its 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; it merely refers without elaboration to Complainant’s “successful marketing,” “literature and advertising,” and “well-known branding.” 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., Alliant Energy Corp. v. Billy Wood, FA 1959495 (Forum Sept. 13, 2021) (denying relief based upon failure to demonstrate trademark rights, despite evidence that domain name was used to impersonate complainant for fraudulent purposes). The Panel therefore 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., Bolton & Menk, Inc. v. Chaiming Ming, supra (declining to address rights or legitimate interests and bad faith in similar circumstances); SundaeSwap Labs, Inc. v. Tech In, supra (same); Brime, LLC v. Jack Zhang, 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 impossiblekick.com domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: January 28, 2023
