Vassilios Pantazopoulos just lost his bid to grab 4 domains including SellMyApp.com with the three member UDRP panel finding the Complainant failed to meet any of the three elements required for a successful UDRP.
The domain holder was represented by Zak Muscovitch of The Muscovitch Law Firm
Here are the relevant facts and findings by the three member panel
On or about October 14, 2010, Complainant launched its website under the domain name sellmyapplication.com.
On or about February 11, 2011, Complainant received consideration for the sale of goods and services related to the SELLMYAPPLICATION.COM trademark/service mark in the amount of $9.99.
On or about July 6, 2012, Complainant filed an application for a trademark registration with the United States Patent and Trademark Office for the mark SELLMYAPPLICTION.COM in the amount of $9.99.
On March 19, 2013, the United States Patent and Trademark issued a registration for the mark SELLMYAPPLICTION.COM (“Complainant’s Mark”).
On or about January 8, 2012, Respondent purchased the Disputed Domain Names <sellmyapp.com> and <sellmyapp.net>. Prior to Respondent’s purchase, the Disputed Domain Names <sellmyapp.com> and <sellmyapp.net> were not used by the original registrant thereof, and the Disputed Domain Name <sellmyapp.com> redirected to <godaddy.com>.
In order for a complainant to establish the first element of the Policy, she or he must demonstrate and establish that it has rights in a trademark and that the disputed domain names are either identical or confusingly similar thereto.
Trademark rights can be established by demonstrating ownership of a trademark registration issued by a national trademark office, including, but not limited to, the USPTO.
Complainant has established that it is the owner of USPTO trademark (e.g., Reg. No. 4,304,654 registered March 19, 2013).
As such, Complainant has established rights in a mark for purposes of Policy ¶ 4(a)(i).
Complainant argues that it also acquired trademark rights in Complainant’s Trademark prior to issuance of the noted trademark registration as the result of its use of the trademark in commerce. This use consisted of launching a website under the domain name <sellmyapplication.com> on October 14, 2010 and receiving consideration for the sale of goods and services through this website on February 11, 2010.
Trademark rights can be acquired for purposes of the Policy through use in commerce and without a trademark registration, and for rights to be established in this way a complainant must show the establishment of secondary meaning in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public,’ the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.”).
Secondary meaning can be established by a complainant by submitting evidence of its continuous use of the mark for a period of time as well as evidence of the amount of revenue generated under the mark, the amount of resources spent marketing the mark, or the number of complainant’s customers.
In the present matter, Complainant supports his claim for common law rights by way of its launch of its website on or about October 14, 2010 and receipt of consideration for the sale of goods and services on or about February 11, 2011, in the approximate amount of $9.99.
The Panel finds that this showing is insufficient to establish common law trademark rights in Complainant’s Mark.
This showing does not address the amount of advertising expenditures, if any, sales other than a single minimal sale, or the numbers of customers.
Further, as Complainant’s Mark consists of common words used in a descriptive sense in accordance with the dictionary definitions thereof, and in this type of situation very strong evidence would be needed to establish the requisite secondary meaning, which Complainant has not shown. As such, Complainant’s rights in a trademark are limited to the registered mark, the application for which was filed on July 6, 2012 and the registration for which issued on March 19, 2013.
For purposes of Policy ¶ 4(a)(i), the question of whether a domain name is identical to a trademark is determined by a simple comparison between the two, while ignoring the generic top-level domain (“gTLD”) contained within the involved domain name. See Islewoth Land Co. v. Lost in Space, SA , FA 117330 (Nat. Arb. Forum Sept. 2, 2002) (“[It is a well–established principle that generic top-level domains are irrelevant when conducting a policy 4(a)(i) analysis.”).
In the present matter the Panel has no difficulty finding that the Domain Names <sellmyapplication.net> and <sellmyapplication.org> are identical to Complainant’s Trademark SELLMYAPPLICTION.COM, and Respondent so stipulated in his response.
The question of whether a domain name is confusing similar to, as opposed identical to, a trademark is also determined by making a comparison, but the comparison does not require a one-to-one correspondence. Confusingly similar can be found in situations in which the domain name abbreviates a word found in the mark. See, e.g., Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated).
In the present matter Respondent uses the expression “app,” which is commonly understood as an abbreviation for the word “application,” and as such the Panel finds that the Disputed Domain Names that employ the expression “app” are confusingly similar to Complainant’s Trademark.
Respondent argues that the first element of the Policy cannot be established in the present matter because Complainant’s Mark did not exist at the time Respondent registered the Disputed Domain Names; however, the Panel finds that this is not a relevant consideration under Policy ¶ 4(a)(i), although it can be for relevant purposes of analyzing the issue of bad faith under Policy ¶ 4(b).
As such, Complainant does establish the first element of the Policy.
Complainant raises the issue that Respondent has not been known by the Disputed Domain Name <sellmyapplication.com>; however Complainant raises this issue only on the basis of “information and belief” and says nothing more about the subject.
Respondent assets that it has been commonly known by the Disputed Domain Name <sellmyapp.com> for purposes of the Policy. To support this assertion the Respondent points to its website, the noted press coverage, the noted hit totals, and the noted revenue figures.
The Panel finds that such uses are sufficient to establish that Respondent is commonly known as SellMyApp.
With respect to the two disputed domain Names <sellmyapplication.net> and <sellmyapplication.org>, the Panel has already found that for purposes of Policy 4(a) that “app” is an abbreviation for “application” and for purposes of this analysis are equivalent, and consequently the Panel finds that Respondent is also commonly known as SellMyApplication.
Complainant argues that Respondent does not have rights or legitimate interests in the Disputed Domain Names because Respondent is not using them in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i).
As such, the Complainant does not establish the second elements of the Policy.
With respect to the two Disputed Domain Names sellmyapp.com and sellmyapp.net, the Panel does not find bad faith in the present matter because these Disputed Domain Names were filed on or about January 8, 2012, which was before the Complainant filed its trademark application on July 6, 2012; it is not generally possible for any respondent to have the requisite bad faith intention under Policy ¶ 4(b) at the moment in time he or she registers a domain name when the complaint does not then have rights in an identical or similar trademark.
The Panel notes that the two Disputed Domain Names sellmyapplicaton.net and sellmyapplicaton.org were registered by Respondent after the dispute between the parties commenced and after Complainant filed its trademark application on July 6, 2013; however, the Panel finds that Complainant has failed to establish that Respondent acted with bad faith as contemplated by Policy ¶ 4(b)(i) through (iv) with respect to these two Disputed Domain Names.
Accordingly, Complainant has not established the third element of the Policy.””