Complainant is CCTV Outlet, Corp. of Hollywood, Florida, United States of America ("United States"), represented by Law Office of Henry Rodriguez, P.L.L.C., United States.
Respondent is Moises Faroy of Clearwater, Florida, United States, represented by Larson & Larson, P.A., United States. 2. The Domain Names and Registrars
The disputed domain names , , and are registered with R, and the disputed domain name is registered with eNom (the "Registrars"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 15, 2015. On April 16, 2015, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On April 16, 2015, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On April 17, 2015, R transmitted by email to the Center its verification response both confirming that Respondent is listed as the registrant for two of the disputed domain names and disclosing registrant and contact information for one disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 20, 2015 providing the registrant and contact information disclosed by R, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 28, 2015.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 Respondent of the Complaint, and the proceedings commenced on April 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2015. The Response was filed with the Center on May 19, 2015.
The Center appointed David H. Bernstein as the sole panelist in this matter on May 27, 2015. 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.
Complainant filed a Supplemental Submission on May 27, 2015 and transmitted a copy of the reply to Respondent that same day. On June 1, 2015, the Panel issued the following Procedural Order:
"In its Supplemental Submission and its accompanying annexes, Complainant provides further factual allegations and legal argument.
Section A addresses alleged deficiencies raised by the Respondent in its Response related to the timeliness of the filing of the Amended Complaint and the execution of the first Declaration of Jose A. Pimentel (the "First Pimentel Declaration").
The question of whether the Panel will accept the Amended Complaint is a legal issue on which no further argument is warranted or necessary. The Panel therefore does not accept the Supplemental Submission's arguments related to that issue, and the Respondent therefore should not reply to that issue. For reasons that the Panel will explain when it issues its decision in this case, the Panel accepts the Amended Complaint.
The parties dispute whether the First Pimentel Declaration was properly signed, dated and notarized. The Panel accepts the Supplemental Submission to the extent it explains that the First Pimentel Declaration was properly dated, signed and notarized. The Panel finds that explanation persuasive, and is therefore inclined to consider the content of the First Pimentel Declaration when it analyzes the issues in this case and prepares its decision. The Panel notes, however, that it has not yet determined whether to accept the truthfulness of the factual allegations in the Declaration. The Respondent need not respond to the Complainant's allegations concerning the execution of the First Pimentel Declaration, but it may do so if it continues to refute the validity of the execution of the Declaration.
Section B addresses the Respondent's arguments concerning Complainant's alleged trademark rights. Most of this section is merely responsive argument and, as such, will be disregarded by the Panel. The one new fact is that Complainant now submits its Columbian trademark registration for MAX and design, which registration was issued on April 28, 2015, the same date that the Complainant submitted the Amended Complaint. Because Complainant may not have been aware of the Columbian registration when it filed the Amended Complaint, the Panel will accept that additional evidence.
Section C addresses the Respondent's arguments concerning Respondent's alleged rights or legitimate interests. Given that many of Complainant's assertions here are directly responsive to new facts raised in the Response, the Panel will accept this section of the Supplemental Submission.
Section D addresses the Respondent's arguments concerning the Respondent's alleged bad faith use and registration of the Domain Names. Because this section is merely responsive argument and does not raise any new facts or legal issues that were not available to the Complainant at the time of the Amended Complaint, the Panel will disregard this section and the Respondent should not reply to any of these arguments.
Given that the Panel has accepted certain parts of the Complainant's Supplemental Submission, the Panel believes it only fair that the Respondent have an opportunity to reply to Complainant's additional factual assertions and legal arguments, namely the relevance, if any, of the Columbian trademark registration and the factual and legal arguments related to Respondent's alleged rights or legitimate interests. Since the Complainant took eight days to file its Supplemental Submission, the Panel will similarly grant the Respondent eight days (from the date of Complainant's filing) to file a Supplemental Submission. Any Supplemental Submission that the Respondent may wish to file shall be filed by June 4, 2015. Respondent need not file a further Supplemental Submission if it prefers to rest on the record as submitted."
Respondent filed a Supplemental Submission on June 4, 2015. The Respondent replied to some of the issues highlighted in the Procedural Order; he did not raise any further objections to the admissibility of the First Pimentel Declaration. The Panel subsequently set the target date for submission of the decision by the Panel to the Center to June 26, 2015. 4. Factual Background
Although the parties vigorously dispute many key facts, there are some facts that have not been disputed in the parties' various submissions.
Jose Pimentel and Moises Faroy are former business partners. Their business relationship has broken down, and this domain name dispute is but one part of the now many disputes between these former business associates.
Pimentel and Faroy are co-owners of Complainant, CCTV Outlet, Corp., a corporation incorporated in the state of Florida. Pimentel owns 70% of the shares and is Complainant's President; Faroy owns 30% of the shares and is a former employee and director. Faroy asserts that he and Pimentel jointly formed CCTV Outlet, Corp. in 1999 and entered into a verbal agreement to be partners; in its Supplemental Submission, Complainant disagrees with that assertion. It is undisputed that Pimentel fired Faroy in October 2014.
Complainant sells security products and surveillance equipment, including equipment under the ECLIPSE and MAX CCTV brands, through retail stores using the CCTV OUTLET trademark. Complainant owns federal trademark registrations for ECLIPSE, and recently applied to register CCTV OUTLET, MAX CCTV with the United States Patent and Trademark Office. Complainant has recently obtained a trademark registration for MAX and design in Columbia.
Pimentel and Faroy appear to be partners in a number of other enterprises. Pimentel and Faroy each appear to own 50% of CCTV Outlet LLC, an Arizona limited liability company. Faroy formed CCTV Core, Inc., formerly known as CCTV Outlet Tampa Bay, Inc., of which Pimentel may also be a stockholder. Faroy asserts that he is the sole owner of that Company; Complainant asserts that Pimentel in fact owns 30%. CCTV Core, Inc. and CCTV Outlet LLC also sell security products and surveillance equipment, including equipment under the ECLIPSE and MAX CCTV brands. Pimentel states that he orally licensed Faroy to use CCTV in connection with these enterprises and that he has terminated that oral license; in his Supplemental Submission, Faroy did not refute those assertions.
Respondent also asserts that he was the founder, creator, and designer of the brand ECLIPSE, and that he formed Eclipse CCTV, Inc. in 2003. In its Supplemental Submission, Complainant acknowledges that Respondent incorporated Eclipse CCTV, Inc., but asserts that Eclipse CCTV, Inc., along with Eclipse Security, Inc., was created at the direction of the officers of Complainant in order to prevent unknown third parties from creating corporations using Complainant's marks. Complainant asserts that neither company engages in any operations.
The disputed domain names were created on the following dates: on February 2, 2000, on August 16, 1999, on March 22, 2000 and on April 30, 2003. The parties disagree as to who originally created and owned the domain names at their moment of creation. Complainant states that the domain names were registered (or were supposed to be registered) in Complainant's name but that Faroy, whose job responsibilities included management of the domain names, surreptitiously and without authorization transferred them into his personal control sometime before his firing in October 2014. Respondent claims that he registered the domain names in his own name, and has always been the owner of these domain names. 5. Parties' Contentions A. Complainant
The Complainant asserts that it owns the trademarks CCTV OUTLET, ECLIPSE and MAX CCTV. Complainant states that it has owned common law rights to the mark CCTV OUTLET since as early as June 9, 1999, when Complainant began its security and surveillance equipment business. Complainant applied for a federal trademark registration in that mark on February 18, 2015.
Complainant states that it has owned the common law rights to the mark ECLIPSE since as early as May 7, 1999 when Fusion, Complainant's predecessor-in-interest, began to sell ECLIPSE-branded products. Complainant owns trademark registrations for this mark. In its Supplemental Submission, Complainant denies Respondent's assertion that Respondent is the founder, creator, and designer of the ECLIPSE brand.
Complainant states that it owns common law rights to the mark MAX CCTV since as early as August 18, 2003. Complainant applied for a federal registration for this mark on February 18, 2015. With its Supplemental Submission, Complainant submitted a copy of its Columbian trademark registration for MAX and Design, for which it applied on February 21, 2014. Respondent does not contest the validity or ownership of the Columbian trademark registration.
Complainant asserts that it accrued common law trademark rights in these marks over years of selling ECLIPSE and MAX CCTV-branded products at CCTV OUTLET retail stores. Complainant asserts that, since 2003, it has sold over USD 102 million worth of products under the CCTV OUTLET mark, USD 92 million worth of ECLIPSE products, and USD 6 million of MAX CCTV products. Complainant also asserts that, since 1999 it has spent over USD 1.7 million on Internet-related advertising for these marks, and that, since 2003, it has spent over USD 1.8 million on traditional advertising for these marks.
Complainant produced advertising samples for the CCTV OUTLET mark dating from 2002 to 2009, advertising samples for the ECLIPSE mark dating from 2004 to 2014, and advertising samples for the MAX CCTV mark from 2003 to 2010. Complainant also produced advertising samples from 1999 and 2001 for ECLIPSE products sold by Fusion Electronics. Complainant produced receipts for ECLIPSE-branded products as well as a 2010 credit card statement showing registration payments charged to Complainant for domain names that it asserts were for the disputed domains names; Respondent did not refute that these charges were for registration of the disputed domain names.
The Complainant asserts that the domain names registered by Respondent are confusingly similar to Complainant's marks and that the Respondent lacks any rights or legitimate interests in the disputed domain names. Complainant asserts that it created and owned the disputed domain names when they were first created.
Complainant alleges that Faroy became an employee for Complainant in January 2000, and was responsible for managing Complainant's domain names and websites. In his declaration, Pimentel asserts that Complainant instructed Respondent to register the domain name on April 30, 2003. Respondent Faroy allegedly became a director on November 28, 2007 and was fired on October 5, 2014. Complainant alleges that, at some point prior to his firing on October 5, 2014, Faroy transferred ownership of the domain names , and to his personal control without Complainant's authorization. Pimentel further alleges that Faroy likely directly registered the domain name in his own name in contravention of Complainant's instructions and authorization. Complainant also alleges that Faroy hired Perfect Privacy to maintain the registration for and and used a privacy shield to hide that he took control of the domain names.
Complainant provided WhoIs records showing that Complainant was the listed Registrant and Administrative Contact of on August 3, 2006 and that Faroy was the listed Registrant and Administrative Contact of on October 14, 2009. Complainant produced WhoIs records showing that Pimentel was the listed Registrant and Administrative contact of on November 2, 2007. On January 13, 2008, Faroy was listed as the Administrative Contact; on October 18, 2008, Domain Discreet was listed as both the Registrant and Administrative Contact; and on November 17, 2014, Faroy was listed as the Registrant and Administrative Contact of .
Complainant asserts in its Complaint that it never authorized, licensed, permitted, or otherwise consented to Respondent's use of its marks. However, in its Supplemental Submission, Complainant states that Complainant had previously authorized the creation of Respondent Faroy's companies CCTV Core, Inc. f/k/a CCTV Outlet Tampa Bay, Inc. and CCTV Outlet, LLC. Complainant asserts that it gave these companies oral licenses granting the right to use the trademarks at issue.
The Complainant alleges that the Respondent either registered or transferred the domain names in bad faith. Complainant alleges that, by selling competitive products on Respondent's websites, Respondent is using the disputed domain names to attract Internet users to his websites by creating a likelihood of confusion with Complainant's marks. B. Respondent
Respondent asserts that Complainant lacks trademark rights in CCTV OUTLET, ECLIPSE and MAX CCTV. Respondent asserts that Complainant's pending trademark application for CCTV OUTLET has not yet been examined. Respondent argues that Complainant alleges that it first used the mark in June 1999, but submitted invoices and other documentation that only date back to 2003. Respondent asserts that Complainant did not provide sufficient evidence to demonstrate the amount of sales under the trademark, the nature and extent of the advertising, or media recognition.
Respondent admits that Complainant registered the marks ECLIPSE and ECLIPSE SECURITY and design. However, Respondent argues that Complainant can only establish trademark rights in its ECLIPSE mark as early as February 23, 2007 and highlights the fact that the domain name was registered on March 22, 2000.
Respondent argues that Complainant lacks rights to the MAX CCTV mark because Respondent filed a trademark application on December 11, 2014, over two months before Complainant filed an application. Respondent submitted a printout of his online application for "MAX", which was filed on December 11, 2014.
Respondent asserts that he has a legitimate interest in the disputed domain names because he and Pimentel are business partners in the CCTV market. Respondent asserts that his business relationship with Pimentel has lasted over fifteen years. Respondent asserts that he and Pimentel formed Complainant together in 1999. Respondent states that he is a sole owner of CCTV Core, Inc., f/k/a CCTV Outlet Tampa Bay, Inc. Respondent also states that he and Pimentel formed and are co-owners of CCTV Outlet LLC, a company located in Arizona, in 2007. Respondent submitted tax statements from 2012, 2013 and 2014 to show that Respondent received earnings as an independent contractor for CCTV Outlet Tampa Bay, Inc. Respondent also submitted the Articles of Organization for CCTV Outlet LLC listing Respondent and Pimentel as managers.
Respondent argues that he incurred expenses associated with advertising and hosting the disputed domain names. Respondent submitted several tax returns and business card statements showing incurred hosting expenses from as early as June 2002 and as recent as April 2015.
Respondent denies that he registered the disputed domain names in bad faith. Respondent asserts that he registered all of the disputed domain names on or before April 30, 2003, and claims that Complainant has not provided evidence showing that it acquired any rights prior to this date. Respondent asserts that he did not register or acquire the disputed domain names primarily for the purpose of selling or transferring the domain name registrations to Complainant. Respondent further asserts that he and Complainant were not competitors at the time of the domain name registrations. Respondent does not respond to Complainant's assertions that Complainant granted Respondent's companies temporary oral licenses to use the marks, nor does Respondent address Complainant's assertions that Respondent worked for Complainant, was responsible for managing Complainant's domain names and websites, was entitled to use the alleged marks pursuant to an oral license agreement, and transferred ownership of the domain names to his personal control without Complainant's authorization.
In response to Complainant's Supplemental Submission, including the production of its Columbian trademark application, Respondent asserts that Complainant failed to prove common law trademark rights prior to the date of filing, and therefore lacked rights to the mark when was registered on April 30, 2003. Respondent asserts that he and Pimentel were partners "in all aspects of the business", and were working together to negotiate a distribution agreement in Columbia. Respondent asserts that he and Pimentel have formed or contemplated forming companies in Taiwan, Province of China, Mexico and Costa Rica, and presented evidence showing the formation of Eclipse CTV of Taiwan Co. Ltd.. and Eclipse Security Costa Rica, S.A. 6. Discussion and Findings
The Complainant has the burden under paragraph 4(a) of the Policy to prove:
(i) that the disputed domain names registered by the Respondent are 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 disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Procedural Matters
As an initial matter, the Respondent has objected to the timeliness of the filing of the Amended Complaint, and to the admissibility of the First Pimentel Declaration.
Because Respondent registered two of the domain names through a privacy service, the Registrar indicated that one of the Respondents listed in the initial Complaint, Perfect Privacy, LLC, was not the actual Registrant. The Center therefore gave Complainant the opportunity (though not the requirement) to amend the Complaint, and asked that any such amendment be submitted within five days. Specifically, the Center stated: "Please note that this invitation is not a formal deficiency under the UDRP Rules, and while we strongly recommend that you amend the Complaint, you are not required to do so. If you choose to amend the Complaint, please submit your amendment by April 25, 2015. You may either (a) replace the named Respondent with the newly identified registrant; or (b) add the newly identified registrant as a respondent by electronically submitting a simple amendment (signed PDF) or an amended Complaint. You may also wish to include further facts or arguments in light of the new registrant information (e.g., as to the Respondent's rights or legitimate interests or bad faith)."
Respondent argues in its Response that Complainant's amendment to its Complaint should be disregarded because Complainant was "required" to amend its Complaint by April 25, 2015, but that it filed its amendment on April 28, 2015. The Panel rejects that assertion. As Complainant notes in its reply, the Center's invitation to amend the Complaint was just that – an invitation – and the requested April 25 date was not a required deadline but rather a request that the Amended Complaint be submitted by then so that the matter could proceed expeditiously. Although it is true that Complainant filed its Amended Complaint after the Center's requested date, the Respondent has not articulated any way in which it has been prejudiced by the filing of the Amended Complaint three days later than requested, especially since that later filing gave Respondent three extra days for its Response. Under the circumstances, the Panel finds that the Amended Complaint was sufficiently timely.
Respondent also argues that the Panel should disregard the Mr. Pimentel's declaration because the declaration was not dated and Notary Public Eduardo Chaparro stated that Pimentel's driver's license was "Not Valid". The Panel rejects those assertions. As Complainant has explained, and as is evident on the face of the document, Mr. Pimentel accidentally signed where the notary was supposed to sign. The notary wrote "NOT VALID" over Mr. Pimentel's erroneous signature, presumably had Mr. Pimentel resign the declaration in the proper location, and the notary then signed below that. As for the date, the notary expressly indicated that he notarized Mr. Pimentel's signature on April 14, 2015. Respondent's arguments to the contrary are frivolous and are rejected. The Panel finds that Mr. Pimentel's declaration was properly signed, dated and notarized. B. Threshold Issue
Respondent argues that the Complaint should fail because the UDRP is not intended to address disputes between business partners, and because the facts are hotly contested. Those arguments reflect a misunderstanding of the UDRP process.
It is true that the UDRP is not intended to address all disputes related to domain names. This Panel is not a general domain name court; rather, the Panel is tasked only with deciding whether Respondent has engaged in abusive cybersquatting. But that does not mean that the Panel therefore has no role to play when the allegations of cybersquatting are presented within the context of a broader dispute between former partners. Rather, it means that the Panel must disregard disputes that are outside of the allegations of cybersquatting and instead focus on whether, as part of the parties' business dispute, the Respondent is guilty of abusive cybersquatting. That, in fact, is the allegation leveled by the Complainant. The Complainant is not asking the Panel to rule on the parties' contractual or other disputes; rather, the Complainant has asserted that Respondent's registration and use of these four domain names constitutes cybersquatting under the Policy. Accordingly, notwithstanding the context in which this dispute arises, it is the Panel's obligation to apply the Policy to the facts of this case and determine whether Respondent has engaged in abusive cybersquatting.
The Respondent also suggests that, because the facts are hotly disputed, the Panel should decline to rule and instead leave this issue to be resolved between the parties in another forum (although there is no evidence that any dispute has been filed in a court or other forum for dispute resolution). That is because, the Respondent claims, the "factual intricacies of this dispute resulting from the business partners' relationship for nearly fifteen years cannot be discerned without full discovery within the scope of civil litigation."
That suggestion also reflects a misunderstanding of the Policy. It is true that it is difficult for a panel to make findings of fact when the facts are hotly contested, especially in the context of an administrative proceeding like this one that lacks the opportunity for the panel to hear live testimony. But, again, that does not mean that the Panel should abdicate its responsibility. Indeed, to do so would be to reward respondents for hotly contesting the facts. Instead, the Panel will do the best it can to assess the facts based on the written record submitted, with the comforting knowledge that, if either party is unhappy with the Panel's factual findings, that Party can easily pursue this matter in court where the parties will have the opportunity to take discovery and where the finder of fact will have the opportunity to hear live testimony and make credibility determinations. C. Identical or Confusingly Similar
An initial issue in this case is whether Complainant has trademark rights in CCTV, CCTV OUTLET, MAX CCTV, MAX and ECLIPSE.
Although Respondent himself did not argue this point (presumably because the Respondent also has a business interest in a finding that the term CCTV can function as a trademark), the Panel finds that Complainant has not established trademark rights in CCTV or CCTV OUTLET (and, in fact, that neither party would be able to establish such trademark rights on the basis of the record in this proceeding). The Panel has determined through review of the USPTO database that the Complainant's applications to register CCTV OUTLET and design and MAX CCTV and design have been preliminarily refused on the ground that the term CCTV (and also the term OUTLET) is merely descriptive and must be disclaimed. On May 27, 2015 Office Actions, the Trademark Examiner held:
"Applicant must disclaim the wording ['CCTV' / 'CCTV OUTLET'] because it merely describes a desirable feature of applicant's goods, closed-circuit televisions, or literally CCTV, systems, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). The term CCTV is a known abbreviation for 'closed-circuit television' [and OUTLET is defined as "a store that sells products made usually by one company and often at reduced prices"]….
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int'l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b)."
The Complainant has not yet submitted a response to the Trademark Office in the CCTV OUTLET and design application. However, in the MAX CCTV and design application (as well as in an earlier application for the plain words MAX CCTV, in an Examiner's Amendment provided to the Panel by Respondent), Complainant did disclaim any exclusive rights to CCTV apart from the mark as shown (though the timing of those disclaimers is not entirely clear from the record). These disclaimers, coupled with the Trademark Office's initial holding that the terms CCTV and CCTV OUTLET should be disclaimed because they are merely descriptive, is persuasive evidence that those terms are, in fact, merely descriptive.
That conclusion is reinforced by the fact that the term CCTV (along, in some cases, with other terms) has been disclaimed in many other registrations for security-related goods and services, including, for example, Registration No. 4,579,108 for SECURITY SYSTEM SOLUTIONS BURGLAR – FIRE – CCTV – ACCESS and design, Registration No. 4,104,289 for CLOSEOUT CCTV.COM and design, Registration No. 4,373,929 for DELUXE CCTV, Registration No. 4,378,770 for IN MOTION CCTV and design, Registration No. 3,907,934 for RUGGED CCTV, and Registration No. 3,753,502 for PLATINUM CCTV and design. Furthermore, the specimens of use of the CCTV mark that Complainant submitted show use of CCTV as a generic term. For example, a 2004 advertisement states that Complainant sells "WIRELESS CCTV" devices.
As such, the Panel finds that Complainant has not established that it has trademark rights in CCTV or CCTV OUTLET.
ECLIPSE and MAX, on the other hand, do not appear to be descriptive of Complainant's security-related goods and services. Complainant owns a United States registration for ECLIPSE and a Columbian registration for MAX and design. These registrations are prima facie evidence of the ownership and validity of those marks, and Respondent has not provided any persuasive reason to find otherwise.
Respondent argues that the Complainant has failed to establish rights in the ECLIPSE mark because Complainant's registrations have priority only back to 2007. That argument is a non sequitur because the question for purposes of the first factor is whether Complainant has trademark rights as of the time of the filing of the Complaint. These registrations clearly establish that Complainant has trademark rights in ECLIPSE (and ECLIPSE SECURITY and design, with SECURITY disclaimed). For what it is worth, the Panel notes that, in the ECLIPSE registration, Complainant claims that its first use of the ECLIPSE mark dates back to 1999.
Respondent argues that the Complainant lacks trademark rights in the MAX mark because Respondent filed to register MAX with the USPTO two months earlier than Complainant. That also is beside the point. The issue for purposes of the first factor is not whether Respondent also has trademark rights, but rather, whether Complainant has trademark rights. Complainant argues that it has common law rights based on its use of the MAX CCTV mark in commerce; Respondent refutes the sufficiency of that evidence. Ultimately, the Panel need not rule on whether the Complainant's evidence of common law rights is sufficient because the recently issued Columbian trademark registration is sufficient to show that Complainant had trademark rights in MAX as of the time of the Amended Complaint.
The domain name wholly incorporates the ECLIPSE trademark, and the domain name wholly incorporates the MAX trademark. For purposes of the Policy, the Panel therefore finds that these domain names are confusingly similar to marks in which the Complainant has rights. D. Rights or Legitimate Interests
Although it is a close question, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names and .
A key theme in Respondent's submissions is that, as a partial owner of Complainant, Respondent has rights in the Complainant's marks. That argument reflects a misunderstanding of the corporate form. The Complainant here is a corporation, and as such, Complainant is a separate juridical entity. It is Complainant – not its employees, not its officers, not even its shareholders – that owns the trademark rights at issue here. Complainant owns trademark registrations for ECLIPSE and MAX, which are prima facie evidence of validity and of Complainant's ownership of those rights. Respondent has argued that he has his own trademark applications pending and that he has his own common law rights, but those assertions are unpersuasive in the face of Complainant's evidence.
Although it is a disputed point between the parties, the Panel finds that Complainant's explanation of the history of the registration of the disputed domain names is more credible. It strains credulity to believe that the Complainant would have authorized Faroy to register these domain names in his own name. To the contrary, the documentary evidence establishes that Complainant paid for the domain name registrations and it further suggests that, for a time, Complainant was the registrant of the domain name . The Panel thus rejects Respondent's suggestion that Respondent has rights in the domain names because Respondent was the authorized registrant of the domain names from inception. Instead, the Panel credits Complainant's assertion that these domain names were all intended to be registered for and owned by Complainant, and that Respondent surreptitiously transferred control of the disputed domain names from the Complainant to him personally.
A final issue that has given the Panel pause is whether Respondent's use of the and domain names is a fair use under the principles articulated in the Oki Data decision and its progeny. Respondent does appear to operate stores at which it sells CCTV products, including, it appears, products bearing the ECLIPSE and MAX trademarks. That does not, though, necessarily give the Respondent personally any fair use rights in these trademarks; rather, at most, it gives the company that owns the store those rights, and once again, those companies are separate juridical enterprises from Mr. Faroy and Mr. Pimentel as shareholders. Further, Respondent's use of the two domain names at issue is inconsistent with the principles set forth in Oki Data. Among other things, that is because Respondent is selling brands other than the ECLIPSE and MAX brands at the websites to which the domain names resolve, and because Respondent's websites misrepresent Respondent as being the rightful owner of these marks and brands.
For the foregoing reasons, the Panel finds, on the limited record submitted, that Complainant has established by a preponderance of the evidence that Respondent lacks rights or legitimate interests in the two domain names at issue. E. Registered and Used in Bad Faith
The finding above that Respondent surreptitiously transferred control of the domain names to his personal account not only undermines any claim of legitimate interests, but it also establishes Respondent's bad faith registration and use of those two domain names. This is not a circumstance, like some other disputes between former partners, where one party registered the domain name openly, with the consent of the other party, and then the parties later fought for control of the domain name. Rather, the Panel finds that Complainant instructed Respondent to register the domain names in Complainant's name and for Complainant's benefit, but Respondent did not do so. Rather, Respondent secretly registered the domain names in his own name or under his control, and even tried to hide is misconduct by using a privacy service for the registrations. These facts establish Respondent's bad faith registration and use under the Policy. Respondent's use of those domain names since then to offer competing products, which is sure to confuse Internet consumers as to the source of the goods sold on the websites, is further evidence of Respondent's bad faith use. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant. The Panel denies the Complaint with respect to the domain names and .
David H. Bernstein
Sole Panelist
Date: July 6, 2015
1 R indicated in its verification response that this domain name is registered in the name of Joe Pimentel. The Center gave the Complainant the opportunity to amend complaint in light of this response from the Registrar. In its Amended Complaint, the Complainant indicated that Complainant and Mr. Pimentel tried without success to obtain control of the domain name. Indeed, both Complainant and Respondent appear to agree that this domain name is under Respondent's control even though the listed owner is Mr. Pimentel. The Complainant did amend the complaint to expressly withdraw all claims against Perfect Privacy, but it did not agree to name Mr. Pimentel as a Respondent. For that reason, the Panel removes Perfect Privacy from the caption of the case and confirms that the only Respondent in this matter is Mr. Faroy, who is the actual registrant for all four domain names.
2 For what it is worth, the Panel notes that both Respondent's and Complainant's applications with the USPTO remain pending, and thus, as Respondent argues elsewhere in his Response, are no proof of trademark rights. The Panel further notes that Respondent's application has been preliminarily refused because of a likelihood of confusion with a third party's registrations, and Complainant's application has been suspended pending the USPTO's assessment of Respondent's application.
3 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903
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