DECISION

Raza Communications v. Rodrigo Teijeiro

Claim Number: FA0212000135603

PARTIES

Complainant is Raza Communications, Chicago, IL, USA (“Complainant”) represented by Patrick W. Fletcher, of Fletcher Law Offices.  Respondent is Rodrigo Teijeiro, San Isidro, ARGENTINA (“Respondent”) represented by Federico Busso.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <razacommunications.com> and <razacom.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge he has no known conflict in serving as Panelist in this proceeding.

Bruce E. Meyerson as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 2, 2002; the Forum received a hard copy of the Complaint on December 11, 2002.

On December 4, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <razacommunications.com> and <razacom.com> are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the names.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@razacommunications.com and postmaster@razacom.com by e-mail.

A timely Response was received and determined to be complete on December 31, 2002.

On January 7, 2003 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names <razacommunications.com> and <razacom.com> be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant states that it currently has a pending trademark application (serial number 78/158568) filed with the United States Patent and Trademark Office for the trademark RAZA COMMUNICATIONS.  Complainant asserts common law interests in the RAZA COMMUNICATIONS mark as it has used the mark since October 14, 1998 in connection with its telecommunications reseller services.   Complainant contends that since 1988 it has spent $250,000 annually to promote and advertise its services under the RAZA COMMUNICATIONS mark.  Complainant claims to have used its mark on radio, television, and the Internet in an effort to raise awareness of its telecommunication services.   According to Complainant, Respondent should be considered as having no rights or legitimate interests in the domain names because before any notice to Respondent of this dispute, Respondent did not make use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

B. Respondent

Respondent contends that Complainant has failed to offer evidence in support of either trademark ownership or marketing expenses, other than the conclusory statements in his declaration.   Respondent argues that there is no offer of evidence to indicate use of the mark or that it is known to the public or that Complainant enjoyed its use prior to that of the Respondent.  Respondent asserts that Complainant has submitted evidence of its application for registration of a trademark but filed the application after Respondent’s acquisition and use of the domain names.   Respondent contends that there is no evidence that Complainant has complied with the statutory period for opposition to the application, whether there were any oppositions filed, or the outcome of any opposition.  Respondent asserts that the mere filing of an application is insufficient to establish ownership of an issued trademark. 

FINDINGS

Complainant currently has a pending trademark application (serial number 78/158568) filed with the United States Patent and Trademark Office for the trademark RAZA COMMUNICATIONS.  Complainant has used its mark in commerce since 1998 in connection with its telecommunications reseller services.  Complainant’s application for registration of its trademark was filed in August 2002,  after Respondent registered <razacommunications.com> and several months before Respondent registered <razacom.com>.    

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

Complainant notes that it currently has a pending trademark application (serial number 78/158568) filed with the United States Patent and Trademark Office for the trademark RAZA COMMUNICATIONS.  Complainant asserts common law interests in the RAZA COMMUNICATIONS mark as it has used the mark since October 14, 1998 in connection with its telecommunications reseller services.  Since 1998, Complainant contends that it has spent $250,000 annually to promote and advertise its services under the RAZA COMMUNICATIONS mark.  Complainant claims to have used its mark on radio, television, and on the Internet in an effort to raise awareness of its telecommunication services. 

Complainant has not established, however, the requisite trademark or common law rights to grant it the necessary “standing” to prevail in this matter.  First, Complainant’s trademark application does not in and of itself establish trademark rights in the mark for which it applied.  Thus, Respondent’s rights in the disputed domain names “vested” before any registered trademark rights have been established in Complainant’s favor.  Amsec Ent., L.C.  v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (pending trademark applications do not establish any enforceable rights to the mark);  Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of the unanimous view that the trademark must predate the domain name”).

Second, Complaint’s mere assertion of common law trademark rights is not sufficient.  A complainant seeking to assert rights in an unregistered mark must provide evidence of use sufficient to establish common law rights.  R. Badgley, Domain Name Disputes § 6.03 (2002).  To establish sufficient distinctiveness in a mark to demonstrate a protectable common law right, a complainant must produce evidence of sufficient distinctiveness that is “substantial.”  Link Clicks v. Zuccarini, D2000-1547 (WIPO Jan. 12, 2001); County Bookshops v. Loveday, No. D2000-0655 (WIPO Sept. 22, 2000).  The general allegations in the record submitted by Complainant fail to demonstrate “substantial” evidence of distinctiveness to warrant a finding of a protectible common law right. 

Having found that Complaint has failed to establish sufficient rights or interests in a registered trademark or a common law trademark, no further consideration of Respondent’s rights or use is necessary. 

DECISION

Complainant’s request to have the domain names <razacommunications.com> and <razacom.com> transferred to it is DENIED.

Bruce E. Meyerson, Panelist
Dated: January 21, 2003

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