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Desoinc.com #UDRP : Panelist noted the lukewarm filing by the Complainant

The Complainant filing the UDRP for the domain desoinc.com didn’t try hard enough with their filing.

That’s the gist of the case, as noted by the sole panelist at the National Arbitration Forum.

Apparently, in this case, the claims set forth by the Complainant were this one liner:

“The domain name is identical to our corporation name. The Respondent is not a corporate officer and has no rights to the name. The unauthorized use of this domain may confuse the market place by inferring an association with Daniel J. Simpson.”

The Respondent  responded equally briefly:

“Respondent submits that Complainant has no registered trademarks as evidenced by Respondent’s searches of the United States Patent and Trademark Office (“USPTO”) online search system. Complainant appears to have no value or recognition built up in its corporate name or products. Respondent registered the disputed domain name on June 25, 2018 with the intent to use it for Respondent’s own business, which is known as DESO INC.”

Final decision: deny transfer of the domain desoinc.com to the Complainant.

The domain transfer was denied.

Daniel J. Simpson v. Fethi akyalcin

Claim Number: FA2010001916959

PARTIES

Complainant is Daniel J. Simpson (“Complainant”), represented by Bob McDermand, California, USA. Respondent is Fethi akyalcin (“Respondent”), Texas, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <desoinc.com>, registered with GoDaddy.com, LLC.

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.

Debrett G. Lyons as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 14, 2020; the Forum received payment on October 14, 2020.

On October 15, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <desoinc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2020 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@desoinc.com. Also on October 22, 2020, 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.

A timely Response was received and determined to be complete on November 12, 2020.

On November 17, 2020, 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

This is a case where the Complaint is so desultorily assembled that the Panel has directly quoted below all that is alleged.

“The domain name is identical to our corporation name. The Respondent is not a corporate officer and has no rights to the name. The unauthorized use of this domain may confuse the market place by inferring an association with Daniel J. Simpson.”

B. Respondent

The Response is correspondingly brief. Respondent submits that Complainant has no registered trademarks as evidenced by Respondent’s searches of the United States Patent and Trademark Office (“USPTO”) online search system. Complainant appears to have no value or recognition built up in its corporate name or products. Respondent registered the disputed domain name on June 25, 2018 with the intent to use it for Respondent’s own business, which is known as DESO INC.

FINDINGS

The only findings pertinent to the decision in this case are that Complainant has provided no proof of a national trademark registration and no proof of common law trademark rights in either DESO or DESO INC.

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 based on 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.

Identical and/or Confusingly Similar

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. In this case, the Complaint fails to establish trademark rights for the reasons which follow.

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] The Complaint does not reference any such registrations. Nevertheless, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights and panels have found that a governmental registration is not required so long as the complainant can establish common law trademark rights.[iii]

Proof of common law rights is the critical aspect of these proceedings and Complainant must show extensive and continuous use in commerce such that consumers have come to associate the asserted mark with the Complainant as being the source of the goods or services. So, for example, in the case of Iacocca v. Tex. Int’l Prop. Assocs., FA 1088017 (Forum Nov. 29, 2007) the panel said that:

“In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, that consumers have come to associate the mark with Complainant, as to the source of the goods.”

There are no relevant submissions in the Complaint, indeed not so much as an assertion of common law trademark rights. Accompanying the Complaint is a so-called table of contents, as follows:

1. Complaint form

2. Deso corporate filing

3. Deso Bank Statement

4. Deso EIN

5. Secretariat Demand

6. Deso Business license

7. Secretariat Remedy

Aside from the Complaint, already considered, it is only items 2, 3 and 6 which may be potential evidence of common law rights. Even then, proof of incorporation of a company or proof of a business name or license is, of itself, not proof of use or reputation of a trading name (and so not proof of a trademark or service mark in which Complainant has rights) unless read in connection with some other evidence of actual use of that name (for example in this case, bank transactional records). That said, the material provided is deficient in fundamental ways. The incorporation documents are not final and do not adequately link Complainant to the named entity. The transactional records are presumably confidential (albeit that confidentiality is not claimed) but, in any case, show a mere handful of trivial, low value transactions over a restricted time period.

This constitutes the whole of the evidence of what might have shown trademark use and for the reasons set out in Iacocca v. Tex. Int’l Prop. Assocs the Panel is not satisfied that the evidence proves common law rights.[iv]

The Panel therefore finds that Complainant has failed to show trademark rights in a term which is either identical or confusingly similar to the disputed domain name. Accordingly, the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

No findings required.

Registration and Use in Bad Faith

No findings required.

DECISION

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 <desoinc.com> domain name REMAIN WITH Respondent.

Debrett G. Lyons, Panelist

Dated: November 18, 2020

[i] As inferred from the language of the Complaint that “the domain name be transferred to our GoDaddy account.”

[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”) The Panel adds here that the national registration need not be one with the USPTO, but under the Policy can be from any such national (or indeed, international) trademark register.

[iii] See, for example, Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”).

[iv] See more generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) at 1.3.


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