WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Vsat Systems LLC v. Serkan Yildiz

Case No. D2007-1301

 

1. The Parties

The Complainant is Vsat Systems LLC, Ohio, of United States of America, represented by Buckingham, Doolittle & Burroughs, LLP, of United States of America.

The Respondent is Serkan Yildiz, Eregli Zonguldak, of Turkey.

 

2. The Domain Name and Registrar

The disputed domain name <vsatsystem.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2007. On September 5, 2007, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On September 5, 2007, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com 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 September 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2007. The Response was filed with the Center on September 29, 2007.

The Center appointed James A. Barker as the sole panelist in this matter on October 16, 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

The following facts appear (from the case file) to be uncontested.

The Complainant trades online under the name “VSAT Systems”, and offers satellite internet related products and services. The Complainant maintains a website at “vsatsystems.com” and “vsat-systems.com”. The Complainant has maintained that website since October, 2003.

The disputed domain name was created on May 22, 2007. Before the filing of the Complaint, the disputed domain name reverted to a website depicting a photograph of a large satellite dish on one side and, against a rectangular orange background on the other side, the words “Vsat System” and immediately below “Coming Soon!”. At the date of this decision, the disputed domain name did not revert to an active website. Rather, that domain name reverted to a website titled “Apache 2 Test Page” which included, among other things, the statement “The fact that you are seeing this page indicates that the website you just visited is either experiencing problems or is undergoing routine maintenance.”

 

5. Parties’ Contentions

A. Complainant

The following is summarized from the Complaint.

The Complainant implies that it has a common law mark for “VSAT Systems”. The disputed domain name is phonetically identical and confusingly similar to that mark. The Respondent has done nothing more than delete an “s” from the Complainant’s mark to create the disputed domain name.

The Complainant is unaware of any evidence to establish that the Respondent is commonly known by the disputed domain name. There is no fair use since the disputed domain name is a misspelling of the Complainant’s mark.

Bad faith may be found where the disputed domain name varies in a minor degree from the Complainant’s mark. The Respondent is intentionally seeking to frustrate Internet users looking for the Complainant’s website. The Respondent has engaged in ‘typo-squatting’, which has been recognized as a bad faith use of a domain name under the Policy.

B. Respondent

The Respondent did not submit a formal response. However, the Respondent sent a number of emails in response to communications from the Center at various stages of these proceedings.

In the first such email on September 16, 2007 (in response to being copied with the Center’s notification of receipt of the Complaint) the Respondent stated “I don’t understand. Please send Turkish mail.” Following a response from the Center, which noted that these proceedings were to be conducted in English (since this is the language of the registration agreement), the Respondent sent a further email on September 17, 2007. In it, the Respondent stated:

“I understand. What is the problem for vsatsystem.com.

vsat: Very small aperture terminal

http://en.wikipedia.org/wiki/VSAT

System

http://en.wikipedia.org/wiki/System

Vsat + System = vsatsystem

Vsatsystem isn’t a mark. I don’t find a mark same as this name.” [The Respondent then provided a link to a Google search for ‘vsat system’.]

On September 29, 2007, the Respondent sent a further email stating that:

“I am working at Dexar. DEXAR is telecommunication company in Turkey. Dexar gives infrastructure solutions in satellite systems and services. Located in Istanbul. I will use this domain for vsat. Domain name (vsatsystem.com) is meaningful and This domain didn’t copy form others domain names.” [The Respondent then repeated references to links provided in his earlier email on September 17, 2007.]

 

6. Discussion and Findings

For the Complainant to succeed and have the disputed domain name transferred to it, paragraph 4(a) of the Policy provides that the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Complainant has asserted each of these elements of paragraph 4(a) in its Complaint (as summarized above). These elements are discussed in turn as follows.

A. Identical or Confusingly Similar

The Complainant must first demonstrate under paragraph 4(a)(i) of the Policy that it ‘has rights’ in a mark. The Panel finds that the Complainant has not established such rights, for the following reasons.

The Complainant provides no evidence of having any registered rights for the claimed mark “VSAT Systems”. Accordingly, the issue is whether the Complainant has unregistered (or common law) rights in that mark. The Complainant does not explicitly argue that it has such a trademark, although the Panel has drawn the inference that this argument is obviously implicit in the Complaint.

To establish rights in an unregistered mark under the Policy usually requires evidence of the distinctiveness of, or reputation associated with, the claimed mark. As noted in item 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the consensus of panel views under the Policy is that “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.”

This type of evidence goes to the heart of what a trademark is. Fundamentally, a trademark can be characterized as a sign used to distinguish goods or services of one person from those of another. A mark may have such a capacity to distinguish if it is distinctive in itself (for example, if it is an invented term) or if a trader has developed a reputation associated with that mark (for example, so that the mark calls to mind that trader).

It is accordingly more difficult to establish unregistered trademark rights in a generic or ordinary term. This is essentially because the term will have a use broader than an association with any particular person or business. A generic term is used for its meaning, rather than its association with a particular trader’s product or service. In other words, the opposite of a distinctive mark is a term that is generic or descriptive and, as such, lacking distinctiveness as a mark.

The question is therefore whether the Complainant has provided sufficient evidence to demonstrate that ‘VSAT Systems’ is a distinctive identifier of the Complainant rather than, for example, a generic or descriptive term.

The Complainant does not provide substantial evidence in this respect. The Complainant essentially provides two pieces of evidence. One is a copy (reproduced on of an A4 page of the Complaint) of its website at “http://vsatsystems.com”. The other is a one page copy of a certificate from the State of Ohio, recording the filing of the Articles of Organization for the Complainant, dated November, 2003.

This evidence does not strongly demonstrate that the Complainant has an unregistered mark. The establishment of a website is not the same thing as the establishment of a trademark. The website may demonstrate that the Complainant has marketed itself. But it does not strongly indicate whether the Complainant has developed “VSAT Systems” as a mark which is distinctively identified with any particular product or service that it provides. Neither does the evidence of its website indicate the extent of the Complainant’s business, which might have provided some support for a finding that “VSAT Systems” is distinctively identified with its products or services as a mark, rather than a descriptor.

The copy of the filing of the Complainant’s Articles of Organization is similarly not strong evidence of it having unregistered trademark rights. It is evidence of the Complainant having the company name of ‘VSAT Systems, LLC’. But a company name is not the same thing as an unregistered trademark. Having a company name does not, in itself, demonstrate that the name is distinctive or used in a trademark sense.

The Complainant otherwise provided no evidence generally required to support a finding of unregistered trademark rights. For example, such evidence might include:

- “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” (See item 7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.)

- business sales figures, revenues, advertising expenditures, number of consumers served, and evidence that there is strong customer identification of the mark with Complainant’s goods or services.” (Richmond Associates, LLC v. hilltopmall, WIPO Case No. D2005-1198.)

The lack of such evidence might not be determinative if the Complainant could otherwise demonstrate that its claimed mark was a distinctive identifier – for example, because the term was invented. However, the Complainant did not make such an argument or (it follows) provide evidence to support it.

On the contrary, there is some evidence to suggest that “VSAT Systems” is a generic or descriptive term in its field. In this connection, the Respondent provided a link to a search on Wikipedia for ‘VSAT system’. (And the Panel notes that it has treated the singular variant of this word – as reproduced in the disputed domain name – as an immaterial difference in this case.) The resulting article explains that “Very Small Aperture Terminal (VSAT) is a two-way satellite ground station with a dish antenna that is smaller than 3 meters”. That article also includes a list of links to various “VSAT system manufacturers”. In addition, a simple Google search suggests that ‘VSATs’ are a type of satellite communication system, and descriptively referred to as such one a variety of third party websites.

The term “system” is obviously descriptive too. The Complainant provided no evidence that the combination of “VSAT” and “system” is distinctive. Rather, the evidence of e.g. the Wikipedia article, which refers to a list of “VSAT system manufacturers”, suggests that the combination is used descriptively.

The Complainant refers to a number of previous cases under the Policy to support its arguments. However, of those cases where the then complainants succeeded, the complainants were able to demonstrate sufficiently clear trademark rights.

In this case, for the reasons set out above, the Panel finds that the Complainant has not demonstrated that it ‘has rights’ in an unregistered trademark.

B. Rights or Legitimate Interests

Because of the Panel’s findings above, it is not necessary for the Panel to make a finding on this ground.

C. Registered and Used in Bad Faith

Because of the Panel’s findings above, it is not necessary for the Panel to make a finding on this ground either.

That is, it is not necessary for the Panel to determine whether the Respondent had the Complainant in mind when he registered the disputed domain name, or may have deliberately registered the disputed domain name as a slight variant of one registered by the Complainant. Even if this is what the Respondent did, as noted above, a Complainant can only successfully proceed under the Policy if it demonstrates that it ‘has rights’ in a trademark (whether registered or unregistered), and otherwise makes out the other elements of paragraph 4(a) of the Policy.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


James A. Barker
Sole Panelist

Dated: October 30, 2007