Complainant Grandville Academic Team Boosters, from the Grandville High School, submitted a Complaint to the National Arbitration Forum for the domain name robodawgs.com. Respondent was a former volunteer coach with at the Grandville High School that used Namejet to win the expired domain in an auction.
Complainant submitted that it had continuously and consistently used the mark ROBODAWGS in connection with its engineering and robotics team competitions since 1998. Complainant submitted that in addition to its common law rights accrued through 14 years of use, Complainant has filed for a federal registration in its mark, ROBODAWGS, U.S. Serial No. 85/672,787, with a claimed first use date of 1998, for use in connection with “educational services for K-12 students, namely an engineering team and competition services” in Class 41.
The domain robodawgs.com was registered to Complainant since 2000. Earlier this year, Complainant failed to renew its domain name. When Complainant’s registration expired, Jeffrey Nelson, a former associate of Complainant registered the robodawgs.com domain name using Namejet. He won the domain after a Namejet auction and paid $101 for it.
Jeffrey Nelson was a volunteer coach with the FIRST Robotics team at Grandville High School. Jeffrey Nelson’s son and a friend were part of the team. While working together, the three of them came up with an idea for a robotic dog that could be used for assisting elderly and disabled individuals. They named the project “Robo Dawg” both because “RoboDawgs” was the name of the FIRST Robotics team that first got them interested in robotics and because the name fit well with a robotic dog.
Jeffrey Nelson began to look into possible websites that would fit with their product name. He used Namejet to track several possible domain names. He was notified that the domain name robodawgs.com had come available for purchase at auction after Complainant had allowed the registration to lapse. Upon review of Complainant’s website, Jeffrey Nelson assumed that Complainant had allowed the site to lapse intentionally. He noted that the site had not been updated since the 2008/2009 academic school year. Respondent submits that Jeffrey Nelson also knew that companies associated with registering and maintaining domains routinely have a policy of giving several notifications and opportunities to renew domain names prior to their being sold at auction. He thought that this would have given Complainant plenty of opportunity to maintain the domain name if it were so inclined. Based on these assumptions, Jeffrey Nelson bid on the robodawgs.com domain name and won the auction for the domain with a bid of US$101.
Around this time, Jeffrey Nelson began using a privacy registration service and the related pseudonym “Floyd Houseman” in association with the administration of the domain name in order to protect his privacy on the internet.
Soon thereafter, Complainant began soliciting Jeffrey Nelson and requesting to buy the domain from him. Respondent declined both a $100 and a $200 offer and finally set the price at $10,000 after Complainant repeatedly asked for a price.
Ultimately the complaint failed at the first element of the UDRP: Identical and/or Confusingly Similar. Panel said that Complainant claimed common law service mark rights in ROBODAWG. On the eve of filing this Complaint, on July 10, 2012, Complainant filed the abovementioned application number 85672787 for registration of a US Trademark ROBODAWGS for services in international class 041.
The three member panel in Alpine Enm’t Grp., Inc. v. Walter Alvarez, WIPO Case No. D2006-1392 stated that “it is well-established that a trademark application alone is not sufficient evidence to establish complainant rights in a mark for the purposes of the Policy. See, e.g., First Tuesday Ltd. v. The Startup Generator & Christopher Stammer, WIPO Case No. D2000-1732; or Monty & Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300.”
Both parties accepted that Complainant had used the name ROBODAWGS since 1998. In this Complaint and in said trademark application, Complainant claimed first use in commerce on August 1, 1998. To have succeeded in this proceeding on the basis of common law rights in the mark, Complainant must have shown that the name had become a distinctive identifier associated with Complainant or its goods or services. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that there is a consensus among panelists that “a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.”
There was no evidence before the Panel that Complainant had used the name as a trademark or service mark. On the evidence Complainant had used ROBODAWGS merely as the name for its robotics team and not in connection with the sale of goods or provision of services.
So the Panel concluded that Complainant failed to establish that it had rights in ROBODAWGS as a trademark or service mark as required by the first element of the test in paragraph 4 of the Policy. So the Complaint was denied.