UDRP complaint for creativ.com denied despite default – Respondent did not reply to purchase offers

The UDRP complaint for the domain name creativ.com was denied at the National Arbitration Forum by a 1-member panel. This was a clear Reverse Domain Name Hijacking case but the owner of the domain did not respond to the complaint. Nevertheless the owner of the domain name won the complaint as the Complainant doesn’t even have a registered trademark, yet alone a trademark that predates the domain name registration.

The domain name creativ.com was registered in 1999. The <creativ.com>  domain name resolves to a website that includes a general offer to sell the disputed domain name. Complainant claims that Respondent has not replied to numerous offers from Complainant to purchase the domain name beginning in August of 2013, roughly five months ago. Complainant alleged that Respondent had not made any use of the disputed domain name.

Complainant claims to have filed trademark applications for three service marks with the United States Patent and Trademark Office on October 1, 2013, roughly four months ago. The marks are [CREATIV] (Reg. No. 86,080,098), THE CREATIVE MOVEMENT (86,079,992), and I AM A CREATIV (86,079,288). All three marks are currently awaiting examination according to Complainant. Complaint alleged common law rights by using the [CREATIV] mark in the course of its routine business for approximately two years as its brand identity.

The complainant didn’t even bother to include these trademark applications in the complaint.

Here is what the panelist said:

Complainant states that it filed trademark applications for three service marks with the USPTO on October 1, 2013. Complainant explains that those marks are [CREATIV] (Reg. No. 86,080,098), THE CREATIVE MOVEMENT (86,079,992), and I AM A CREATIV (86,079,288).  Complainant claims that all three marks are currently awaiting examination. The Panel notes that Complainant does not include in the Complaint any of the trademark application documents and, as such, there is absolutely nothing in the record to give credit to the contention that there are any trademark applications by Complainant. Therefore, the Panel must look to Complainant’s common law rights, if any, to determine if Complainant has rights in the [CREATIV] mark pursuant to Policy ¶ 4(a)(i).

Complainant claims that it has established common law rights by using the [CREATIV] mark in the course of its routine business for approximately two years as its brand identity. The Panel notes that Complainant provides support for its assertion of common law rights by way of a twitter account, which has 1,591 followers, as well as a website located at <iamcreativ.com>. The Panel also notes that the twitter account and the website make use of the [CREATIV] mark. It is clear that the domain name at issue was registered in 1999, fourteen years ago.  It is also clear that Complainant only claims use of the [CREATIVE] mark for the past two years with no evidence of significant and widespread public association with Complainant or its goods and services.  The Panel finds that the above evidence is not sufficient to establish a secondary meaning for the mark in the mind of the public and thus to confer common law rights in the Complainant’s [CREATIV] mark under Policy ¶ 4(a)(i).

The Panel finds that Policy ¶ 4(a)(i) has not been established.

Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel it declines as unnecessary the analysis of the other two elements of the Policy.

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <creativ.com> domain name remain with Respondent.

James A. Carmody, Esq., Panelist