WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lilian Vachovsky, COO, Aplus.Net Internet Services v. A+ Hosting Inc.

Case No. D2006-0703

1. The Parties

The Complainant is Lilian Vachovsky, COO, Aplus.Net Internet Services, San Diego, California, United States of America, represented by Matthew O'Neill, United States of America.

The Respondent is A+ Hosting Inc., Las Vegas, Nevada, United States of America, represented by M. Scott Donahey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <aplushosting.com> is registered with Tucows, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2006. On June 7, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On June 8, 2006, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 22, 2006. 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”), 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 June 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2006. The Response was filed with the Center on July 8, 2006.

The Center appointed Thomas P. Pinansky, William R. Towns and Arif Hyder Ali as panelists in this matter on August 30, 2006. The Panel finds that it was properly constituted. Each member of 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.

The due date for the decision was extended by the Panelon September 29, 2006.

4. Factual Background

(i) The Respondent registered the domain name on October 1, 1998.

(ii) The Respondent has continuously used the domain name and has advertised on websites and in magazines.

(iii) The Complainant registered <aplus.net> as a domain name on August 10, 1998.

5. Parties’ Contentions

A. Complainant

The Complainant asserts, inter alia, as follows:

(i) The Respondent’s <aplushosting.com> domain name is confusingly similar to the Complainant’s <aplus.net> domain name and certain common law rights in certain marks.

(ii) The Respondent has no rights or legitimate interests in the domain name.

(iii) The Respondent registered and used the domain name in bad faith.

B. Respondent

The Respondent asserts, inter alia, as follows:

(i) The Complainant’s use of <aplus.net> does not date back to 1992, and the Complainant filed a fictitious business statement on June 12, 2001.

(ii) The Complainant used the domain name <aplus.net> around December 1999.

(iii) The Respondent continuously used the domain name and spent money on advertising, which Complainant did not prove any advertising payments or anything that would show that <aplus.net> acquired any secondary meaning.

(iv) The Complainant became a competitor of the Respondent in 2001 and is attempting to acquire Respondent’s goodwill.

6. Discussion and Findings

A. Identical or Confusingly Similar

Under Paragraph 4(a)(i) of the Policy, the Complainant must demonstrate rights in the marks that it asserts the disputed domain name is identical or confusingly similar to. In this case the Complainant asserts common law trademark or service mark rights in A+ NET. It is well settled that the term “trademark or service mark” as used in Paragraph 4(a)(i) encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005, The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.

Common law rights in a trademark derive from the use of the mark in commerce so as to distinguish the trademark owners’ goods or services from those of its competitors. See T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372 (Fed.Cir. 1996). Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).

Although the Complainant apparently does not have a registered trademark or service mark for the words “Aplus” or “Aplus.Net”, this fact standing alone is not fatal to a finding of identity or confusing similarity under the Policy. According to paragraph 4(a)(i) of the Policy, common law rights are sufficient to support a domain name complaint. To establish common law rights in a mark, a complainant must show that its mark has acquired secondary meaning, i.e., that the public associates the asserted mark with complainant’s goods and services. See First Place Financial Corp. v. Michele Dinoia c/o SZK.com, FA 506772 (Nat. Arb. Forum August 22, 2005). ICANN Panels have found relevant evidence of secondary meaning to include “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition”. Candy Direct, Inc. v. italldirect2u.com, FA 514784 (Nat. Arb. Forum August 22, 2005).

However, in this particular case, the Complainant has provided no documentary evidence of its contentions that could allow the Panel to conclude that the terms “Aplus” or “Aplus.Net” have been used by the Complainant in a way and to an extent which would justify a finding of trademark rights under the Policy. The Complainant’s assertions – that “Aplus.Net” has served as its trade name and web address since August 10, 1998 (the date the domain name was registered), that it has engaged in “significant and material advertising”, that “Aplus.Net” “has been commonly known in association with the Aplus word, mark(s) and domain name and has established brand equity and recognition in the name, marks and associated trade dress” – are insufficient to establish common law rights in the terms “Aplus” or “Aplus.Net” without supporting evidence to establish the manner and extent of the Complainant’s use of this term prior to Respondent’s registration of the disputed domain name on October 1, 1998. See Sealite Pty Limited v. Carmanah Technologies, Inc., WIPO Case No. D2003-0277 (WIPO June 11, 2003) (“the Policy does not protect trade names or company names when that is the extent of their use”.); see also Pet Food Experts, Inc. v. R. Ryner, WIPO Case No. D2005-0536 (WIPO July 30, 2005) (noting that, to serve as a trademark, the asserted trade name “must be used in a manner so that the public can come to recognize it as an indication of source”).

It is well-established that mere assertions of common law rights in a mark are insufficient without accompanying evidence to demonstrate that the public identifies the Complainant’s mark exclusively or primarily with the Complainant’s products. See, e.g., Yao Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Bald assertions of consumer knowledge are not an adequate form of evidence to establish secondary meaning in a name”); see also Saint Francis Hospital and Medical Center v. Registrant (187640), WIPO Case No. D2006-0543 (WIPO June 19, 2006) (holding Complainant’s failure to produce any evidence in support of its allegations that the asserted mark had acquired secondary meaning was fatal to its claim under paragraph 4(a) of the Policy). Because the Complainant has failed to produce any evidence to support its assertions that the terms “Aplus” and “Aplus.Net” have acquired secondary meaning, it has not established a secondary meaning sufficient to create a common law mark. Accordingly, the Panel finds that the Complainant has failed to meet its burden of proving under paragraph 4(a)(i) of the Policy that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has also failed to meet its burden under paragraph 4(a)(ii) to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. It is undisputed that the Respondent did not receive any notice of this dispute until, at the earliest, June 2003. It is uncontroverted that the Respondent began using the disputed domain in connection with the Respondent’s web hosting site well in advance of receiving any notice of the dispute. Further, there is insufficient evidence in the record to support any claim by the Complainant to have established common law rights in its mark at the time the Respondent registered and began using the disputed domain name. Thus, the record demonstrates the Respondent’s use of the disputed domain name in connection a bona fide offering of goods or services prior to any notice of the dispute, thereby establishing rights or legitimate interests in the domain name under paragraph 4(c)(i) of the Policy.

C. Registered and Used in Bad Faith

Given the determination by the Panel that the Complainant has failed to meet its burden under paragraph 4(a)(i) and 4(a)(ii) of the Policy, the Panel finds it unnecessary to address the question of bad faith registration and use under paragraph 4(a)(iii).

D. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew of the respondent’s unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. In the Panel’s judgment, the Respondent has not made the necessary showing to prevail on its claim of reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: October 26, 2006