WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robotex Inc. v. eD
Case No. D2007-1074
1. The Parties
The Complainant is Robotex Inc, of Palo Alto, California, United States of America, represented internally by Nathan Gettings.
The Respondent is eD, of Mt. Gilead, North Carolina, United States of America, represented internally by Sandra Parson.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2007. On July 27, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same date, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2007. The Response was filed with the Center on August 16, 2007.
The Center appointed M. Scott Donahey as the sole panelist in this matter on August 29, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant was formed as a Limited Liability Company (LLC) on June 24, 2005. Complaint, Annex 7. Complainant thereafter converted the business to a Delaware corporation on June 26, 2007. Complaint, Annexes 8 and 9. Complainant operates under the trade name “Robotex”. Complainant manufactures at least three products broadly described as “military robots” and known to its customers as RoboteX-IRR, RoboteX-PK, and RoboteX-AH.
On July 19, 2005, Complainant registered the domain name . Complainant uses that domain name to resolve to a website at which Complainant’s business and its products are very generally described and at which job opportunities are posted. Complaint, Annex 4.
Respondent registered the domain name at issue on September 17, 2002. Complaint, Annex 1. Respondent warrants in its Response that at the time it registered the domain name at issue, it checked for registered trademarks and found none. Respondent uses the domain name at issue to resolve to a website which has links to various robotics services and suppliers. The domain name at issue is also offered generally for sale on this website. Complaint, Annex 3.
Respondent has a large number of domain names offered for sale. Complaint, Annex 10. These names generally consist of common English words, alone or in combination, and a gTLD suffix.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name at issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
B. Respondent
Respondent contends that it registered the domain name at issue in good faith, since it checked for trademarks prior to its registration and found none, and since Complainant did not even come into existence until almost three years after Respondent’s registration of the domain name at issue, and that Respondent is using the domain name at issue in good faith to resolve to a robotics directory.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant does not claim nor produce any evidence that it has a registered, or even an unregistered, trademark or service mark. Complainant does lay claim to the trade name “Robotex”. The Panel agrees that the domain name at issue is identical to Complainant’s trade name. However, a trade name is not a trademark or service mark, and trade names are not, as such, protected under the UDRP.
This does not resolve the issue completely, as a trade name which satisfies the condition for protection as an unregistered mark may qualify in appropriate circumstances for protection under the UDRP. It is incumbent upon the panel to determine whether, under the present circumstances, Complainant has proven that the trade name at issue is entitled to protection as an unregistered mark.
Since 2005, WIPO has published the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. See, “”. In Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, WIPO specifically examined panel decisions on the issue of what needs to be shown in order to satisfy the requirements for protection as an unregistered mark:
The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
Id., emphasis added.
In Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575, the complainant registered its mark more than two years after the respondent registered the domain name at issue. However the complainant produced evidence that it had been using the mark for several years prior to its registration. The panel found that the complainant had established rights in an unregistered mark at some unspecified date prior to the registration of the domain name at issue.
In Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314, the panel noted that while the complainant had clearly used the trade name for several years, it was not a registered trademark or service mark. However the complainant produced evidence of longstanding use, including evidence that more than three million tax payers and the public at large viewed the trade name as identifying the complainant as the source of tax services in Norway, citing its 19 county tax offices, 18 tax collector offices, 435 local tax offices, more than 6,000 employees, and more than 3,400,000 Norwegian tax payers. The panel found that this evidence established the complainant’s trade name as an unregistered service mark.
In Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786, the panel found that the complainant had established rights in an unregistered service mark by providing evidence that complainant had used the mark as identifying itself and its services for many years, that in recent years it had invested more than ten million Australian dollars to publicize its services under that unregistered service mark, that it raised an equal amount of annual revenues through the use of the mark, and that it advertised its services under the mark in brochures and other written materials distributed to a wide audience.
In contrast to the above cases, in Amsec Enterprises L.C. v. Sharon McCall, WIPO Case No. D2001-0083, the panel found that the complainant had failed to establish that it had any rights in respect of an unregistered mark. Stating that relevant evidence of secondary meaning could include length and amount of sales under the mark, the nature and extent of advertising, consumer surveys, and media recognition. The panel noted that the only evidence submitted was the assertion that the trade name had been used for a nine year period, a web page that was in use days before the complaint was filed, and that complainant’s gross sales had exceeded seven million dollars. The panel found that such evidence alone was not sufficient to establish unregistered trademark rights.
In the present case, Complainant asserts that it has been using the trade name for approximately two years. Complainant offers no concrete evidence that would support the acquisition of secondary meaning sufficient to constitute a common law mark. Complainant failed to submit any evidence in the nature of advertising, revenues, sales, consumer surveys, media recognition, or the like.
The Panel concludes that Complainant has failed to carry its burden of proof that it has rights in an unregistered mark, a possibility that the Panel does not exclude, but which has not been established. In arriving at this conclusion, the Panel does not reach the issues as to whether Respondent has rights or legitimate interests in respect of the domain name at issue or whether the domain name at issue was registered by and is being used by Respondent in bad faith. As it is Complainant’s burden to prove each element in order to prevail, Complainant’s failure to submit evidence on the issue of rights in an unregistered mark compels the Panel to deny the complaint in the instant proceedings.
7. Decision
For all the foregoing reasons, the Complaint is denied.
M. Scott Donahey
Sole Panelist
Dated: September 12, 2007
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