Complainant is National Association of Competitive Soccer Clubs of Charleston, South Carolina, United States of America, represented by Whyte Hirschboeck Dudek S.C., United States.
Respondent is Bruce Binler of East Northport, NewYork, United States.
The disputed domain name <usclubsoccer.net> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2009. On July 16, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On that same day, Tucows Inc. transmitted by email to the Center its verification response confirming that 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” 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 July 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2009. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 17, 2009.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 24, 2009. 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 has registered the term US CLUB SOCCER as a service mark on the Supplemental Register of the United States Patent and Trademark Office (USPTO), registration number 2,958,764, dated May 31, 2005 in International Class (IC) 35, covering, inter alia, “promoting the interests of youth soccer in the United States”. Complainant filed on June 3, 2009 an application for registration for the same term on the Principal Register of the USPTO, serial number 77751074, in IC 41.
Complainant initially applied for registration of the US CLUB SOCCER service mark on the Principal Register of the USPTO on May 28, 2004. That application was rejected by the USPTO on grounds that it combined a primarily geographically descriptive term (“US”) with terms that are generic or merely describe the services provided by Complainant (“CLUB SOCCER”).1 Upon receipt of notification of the rejection, Complainant converted its application to request registration on the Supplemental Register (letter from Complainant's counsel to USPTO, dated February 22, 2005).
The Complaint filed in this proceeding states that Complainant owns a “federal trademark registration” for the US CLUB SOCCER service mark. It does not state that that mark is registered on the Supplemental Register, nor does it disclose that Complainant's initial application to the USPTO for registration on the Principal Register was rejected. The Complaint attaches a copy of the Supplemental Register registration as evidence of service mark rights.
Complainant performs soccer registration and sanctioning services for member soccer clubs, leagues and tournaments in the United States. Complainant indicates that it has 2300 member organizations in 49 states, and “provide services to approximately 250,000 youth soccer players throughout the United States annually. Even since just January 2008 Complainant has sanctioned more than 620 soccer tournaments throughout the country, many of which consist of more than 100 soccer games.” Complainant operates a commercial Internet website at <www.usclubsoccer.org>.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on November 15, 2007.
Respondent has used the disputed domain name in connection with promoting certain youth soccer tournaments under the website homepage banners “Score Showcase” and “Score at the Shore”. Tournaments were promoted for February 2009 (Tampa Bay Area, Florida) and July 2009 (Greater Greensboro, North Carolina).
Using its asserted US CLUB SOCCER mark, Complainant provided tournament sanctioning services for Respondent in connection with Respondent's “Score at the Shore” tournament in 2006 and 2007.
Complainant has provided a copy of its email to Respondent, dated March 23, 2009, purporting to confirm a telephone conversation in which Respondent offered to transfer the disputed domain name to Complainant.
The Registration Agreement in effect between Respondent and Tucows subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Complainant alleges rights in the service mark US CLUB SOCCER as evidenced by registration at the USPTO and as otherwise established by use in commerce in the United States. Complainant argues that its service mark is well recognized by consumers of soccer-association related services in the United States.
Complainant contends that the disputed domain name is confusingly similar to its service mark. Complainant indicates that Respondent deliberately adopted the disputed domain name because it is confusingly similar to its service mark.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant contends that Respondent has not been authorized to use its mark, that Respondent has not been commonly known by the disputed domain name and has not done business under the US CLUB SOCCER name, and that Respondent has made commercial use of Complainant's service mark with the specific intention of taking advantage of Complainant's trademark. Complainant argues that because it provided tournament hosting services for Respondent for several years, Respondent was well aware of Complainant's service mark rights when it registered the disputed domain name.
Complainant argues that Respondent registered and has used the disputed domain name in bad faith. Complainant indicates that Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent's website by creating confusion as to Complainant acting as source, sponsor, affiliate or endorser of Respondent's website and the tournaments advertised on Respondent's website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
The Respondent did not reply to the Complainant's contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center transmitted the Notice of Complaint and Commencement of the Administrative Proceeding to Respondent by courier, fax and e-mail. The records provided by the Center indicate successful delivery by courier and fax, and there is no indication of difficulty with email transmission. The Panel is satisfied that the Center complied with the provisions of the Policy and Rules intended to ensure adequate notice to Respondent, and that Respondent was provided with an adequate opportunity to respond to the Complaint.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has attempted to establish service mark rights in US CLUB SOCCER by reference to “federal registration” of that alleged service mark, as well as by a pending application for registration of that term as a service mark. Complainant has further alleged common law rights in the service mark US CLUB SOCCER based on use in commerce in the United States and recognition by consumers in the field of soccer-association related services.
Complainant's application for registration of US CLUB SOCCER on the Principal Register of the USPTO was rejected because the asserted mark was determined to combine a primarily geographically descriptive term (used to indicate the place where services are provided, i.e., the United States) with generic or merely descriptive terms for the type of services Complainant is providing. As stated in the letter of rejection from the USPTO, “CLUB is defined as ‘an athletic team or organization,' and SOCCER is defined as a sports game. Plus, the applicant is conducting, arranging and sanctioning competitions for soccer teams in the United States. It is also promoting soccer teams in the United States.”2 Complainant did not contest this USPTO rejection, but rather converted its application to one for registration on the Supplemental Register.
As the Panel has noted in a prior determination under the Policy:
“[…] registration on the Supplemental Register implies that the applicant could not demonstrate that the claimed term was distinctive (see Thomas McCarthy, McCarthy on Trademarks, 4th ed. May 2007, §19:37). Registration on the Supplemental Register establishes no presumption as to the validity of a mark. While the USPTO does not register marks on the Supplemental Register which it considers to be generic, the fact of registration on the Supplemental Register does not establish a presumption that marks are not generic. As McCarthy observes: “the fact that a term is registered on the Supplemental Register does not entitle it to any statutory presumption that the term is a trademark and not a generic name: ‘In fact, it is not prima facie evidence of anything except that the registration issued' (id., at §19:37, footnote omitted).” Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet, WIPO Case No. D2007-0875.
Complainant does not enjoy a presumption of service mark rights based on registration of US CLUB SOCCER on the Supplemental Register of the USPTO. Complainant does not enjoy any presumption of rights based on the submission of a recent application for registration of the same term on the Principal Register of the USPTO.
Although Complainant did not indicate in the Complaint that its asserted service mark was registered only on the Supplemental Register, Complainant nevertheless has proposed in the alternative that it owns rights in the service mark US CLUB SOCCER based on use in commerce in the United States and consumer recognition of the mark.
In order to establish federal common law service mark rights, Complainant must establish that it's claimed terms are inherently distinctive, or that they have acquired secondary meaning among consumers (and that they have been used in commerce). However, terms that are commonly descriptive or generic are not capable of acquiring secondary meaning. See Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105.
The Panel is not bound by the determination of the USPTO in 2004 regarding the capability of the terms US CLUB SOCCER to serve as a service mark when assessing whether Complainant may have established federal common law rights in the asserted mark. Complainant had the opportunity in this proceeding to address the grounds on which the USPTO rejected its service mark application for the Principal Register, namely that “US” is primarily geographically descriptive of the origins of its services, and that “the addition of a generic or merely descriptive term to a geographic term does not obviate a determination of geographic descriptiveness”.3 Complainant did not seek to explain how “CLUB” and “SOCCER” in combination are anything other than commonly descriptive of the services it is providing (such that they are inherently incapable of acquiring secondary meaning), so as to provide a basis for establishing rights in a combination term that includes a primarily geographically descriptive term (see Pet Warehouse v. Pets.Com, Inc., id. ).4 There is no obvious difference apparent in the provided record in the circumstances of Complainant today and the circumstances when its service mark application for the Principal Register was rejected in 2004.
As noted above, Complainant has provided evidence that its alleged service mark is in use and known in the United States. Critically however, Complainant did not address the question whether the terms are commonly descriptive or generic. In the interests of fairness, the Panel performed Google and Bing searches for CLUB SOCCER together.5 Those searches returned many millions of “hits”. While Complainant's organization was listed first in non-advertising rank, there was a substantial number of references to organizations, news reports, domain names and other listings that include “club soccer” as a descriptive term. The Panel does not consider this search to be ultimately determinative on the question whether Complainant might establish rights in US CLUB SOCCER as a service mark, but it was sufficient to persuade the Panel that Complainant has not here carried its burden of demonstrating that the terms are more than commonly descriptive or generic, given that the USPTO previously decided to that effect.
On the present record, the Panel finds that Complainant enjoys no presumption of rights in its claimed service mark. The rejection by the USPTO of Complainant's application for registration on the Principal Register and Complainant's conversion of that application to the Supplemental Register implies that its alleged service mark is not distinctive. The grounds of rejection by the USPTO expressly related to characteristics that may be understood to preclude the establishment of secondary meaning (i.e., primarily geographically descriptive term, generic-ness or mere description). Complainant had the opportunity to address the concerns of the USPTO and shared by this Panel. Complainant elected, and is presumed to have done so deliberately, not to describe and address the formal concerns of the U.S. trademark registration authority in the present proceedings. The complaining party in a proceeding under the Policy is expected to present its case in its initial pleading. This sole panelist is reasonably flexible in terms of seeking supplemental information from parties that might not reasonably have been understood to be necessary to reaching an informed decision. In the present circumstances, the Panel finds no compelling basis for seeking additional information from Complainant on the issue of the claimed service mark and distinctiveness thereof. Had Complainant (who is represented by U.S. counsel) wished to address the importance of the rejection by the USPTO, and the terms of that rejection, it is reasonable to assume it would have done so in the Complaint. It did not do so, and the Panel draws the appropriate inference from such omission.
Accordingly, the Panel finds that Complainant has failed to establish rights in a trademark or service mark, and therefore cannot prevail on the record in this present proceeding. The Panel therefore will not address the issues of rights or legitimate interests, or bad faith.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: September 7, 2009
1 Following its initial review of the Complaint, the Panel performed a search of the USPTO TARR database and retrieved the correspondence between Complainant's counsel and the USPTO.
- US PTO Office Action of January 14, 2005, available at USPTO TARR database.
2 USPTO Office Action of January 14, 2005, available at USPTO TARR database.
4 Complainant has argued that the public recognizes its service mark, but public recognition cannot of itself establish distinctiveness in respect of commonly descriptive or generic terms.
5 Panel searches of September 7, 2009.