DECISION

 

Gumwand Inc. v. jared brading

Claim Number: FA1806001794058

 

PARTIES

Complainant is Gumwand Inc. (“Complainant”), represented by William Dunnegan of Dunnegan & Scileppi LLC, New York, USA.  Respondent is jared brading (“Respondent”), Great Britain (UK).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gumwand.com>, registered with 123-Reg Limited.

 

PANEL

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

 

Charles A. Kuechenmeister

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 27, 2018; the Forum received payment on June 27, 2018.

 

On June 29, 2018, 123-Reg Limited confirmed by e-mail to the Forum that the <gumwand.com> domain name is registered with 123-Reg Limited and that Respondent is the current registrant of the name.  123-Reg Limited has verified that Respondent is bound by the 123-Reg Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of July 30, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gumwand.com.  Also on July 9, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On August 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE

Complainant submitted a copy of a transcript of judgment entered on July 26, 2017 in the U. S. District Court for the Eastern District of New York in its favor against the defendants, Gum Wand Ltd. and Martin Whitbread (Complaint Exhibit B).  The court entered a permanent injunction barring the named defendants from making any statement that suggests their affiliation with Complainant, and from manufacturing, selling or advertising any products using Complainant’s registered GUMWAND mark.  The court further ordered the defendants to transfer to Complainant complete ownership and control of the <gumwand.com> website and domain name and to refrain and desist from using any domain name having gumwand or gum wand or any colorable variation in its name.  The Panel notes that the registrant of the Domain Name, and the Respondent in this case, is jared brading.  There is no evidence that either of the named defendants in the court case has ever been the registrant of the Domain Name.  Further, the Respondent here, jared brading, was not a party to the court case and is not bound by the judgment entered therein.  The judgment entered by the court in that case thus has no bearing on the matters at issue between Complainant and the Respondent in these proceedings.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant produces steam cleaning devices useful for removing chewing gum residue.  It registered the GUMWAND mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,676,168) on January 20, 2015.  Respondent’s <gumwand.com> domain name (the “Domain Name”) is confusingly similar to Complainant’s GUMWAND mark because it incorporates the mark verbatim, with the only change being the addition of the generic top-level domain “.com.”

 

Respondent lacks rights and legitimate interests in the Domain Name because he does not use it in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.  Respondent previously used the Domain Name to offer faulty, counterfeit products under Complainant’s mark and currently uses it to redirect Internet users to his own web site, which offers competing products.

 

Respondent registered and uses the Domain Name in bad faith.  Respondent uses the Domain Name to sell goods and services that compete directly with those that are offered by Complainant.  Further, Respondent’s business entity defaulted in a District Court action regarding rights to the Domain Name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  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.

 

In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

The Panel makes the findings set forth below with respect to the Domain Name.

 

Identical and/or Confusingly Similar

Complainant registered the GUMWAND mark with the USPTO (Reg. No. 4,676,168) on January 20, 2015.  See, Complaint Exhibit A.  Registration of a mark with the USPTO has routinely been held to be sufficient to establish a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).  Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).

 

Respondent’s Domain Name is virtually identical to Complainant’s mark in that it consists entirely of the mark, verbatim.  It does add a gTLD to the mark but this does not distinguish it from the mark for the purposes of Policy ¶ 4(a)(i).  Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”).

 

For the reasons discussed above, the Panel finds that the Domain Name is identical or confusingly similar to the GUMWAND mark, in which Complainant has substantial and demonstrated rights.

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it.  If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests.  If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety.  At all times, the burden of proof remains on the complainant.  WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)            before any notice to you of the dispute, your 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; or

(ii)          you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii)         you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because he is not using it in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use.  Instead, he previously used it to sell counterfeit merchandise using the GUMWAND trademark under the Domain Name, and currently uses it to redirect Internet traffic to his web site at <steam-e.com>, where he offers for sale products which complete with Complainant’s products.

 

Complaint Exhibit F is a screenshot of the web site resolving from the Domain Name as of February 11, 2015.  It prominently displays the GUMWAND mark and logo, and offers chewing gum-removal equipment for sale under that name.  Complainant alleges that the equipment offered by Respondent at this time was counterfeit and this allegation is not contradicted by any evidence before the Panel.  Using a domain name to offer counterfeit products does not qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).  Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization).

 

Complaint Exhibit G is a screenshot of the web site currently resolving from the Domain Name.  It offers chewing gum-removal equipment for sale under the name Steam-E.  Using a domain name to redirect internet users to a webpage that offers competing goods and services does not qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).  General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).

 

Complainant has made its prima facie case.  For the reasons set forth above, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.

 

Registration and Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name.  They are as follows:

(i)            circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii)          you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii)         you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)       by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.

 

Complainant asserts that the conduct discussed above in connection with the rights and legitimate interests analysis also constitutes bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  It also asserts that Respondent’s failure to appear and defend in the U. S. District Court case discussed above is indicative of bad faith.  These arguments may have merit as regards the matter of bad faith use, but a complainant must prove both bad faith use and bad faith registration in order to prevail.  Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D 2000-0003, Mile, Inc v. Michael Burg, WIPO Case No. D2010-2011 (“The consensus view since the Policy was implemented in 1999 has been that the conjunctive "and" indicates that there must be bad faith both at the time of registration and subsequently.”). 

 

Complainant did not submit evidence of the WHOIS information pertaining to the Domain Name, or any other evidence of the date on which Respondent registered the Domain Name.  This information is critical because it is well settled that a respondent cannot be found to have registered or used a domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark.  Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007), WIPO Overview ¶ 1.1.3 (“Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.”).  UDRP panels do not generally make independent factual inquiries outside the materials presented to them by the parties, but a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and making a decision.  WIPO Overview ¶ 4.8.  Because the date of registration is so vital to a proper determination of the case, this Panel exercised its discretion to consult the WHOIS record pertaining to the Domain Name.  That record shows that Respondent registered the Domain Name on November 28, 2012, more than two years before Complainant registered the GUMWAND mark with the USPTO and more than a year before the first use in commerce date shown on Complainant’s registration certificate for that mark.

 

The WIPO Overview 3.0 states at ¶ 3.8.1:

 

Subject to scenarios described in 3.8.2 [dealing with domain names registered in anticipation of trademark rights], where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent.

 

See also Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce.  Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).

 

None of the exceptions to this general principle apply in the present case.  There is no evidence that Respondent registered the Domain Name in 2012 with any knowledge or anticipation of Complainant’s specific trademark being developed more than a year later.  Any rights Complainant may have acquired in the GUMWAND mark since its first use in commerce in February 2014 were not in existence in 2012 when the Domain Name registration occurred.  Thus, there is no evidence that Respondent registered the Domain Name in bad faith.

 

For the reasons set forth above, the Panel finds that Complainant has failed to prove that Respondent registered the Domain Name in bad faith within the meaning of ¶ 4(a)(iii).

 

DECISION

Complainant 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 <gumwand.com> Domain Name REMAIN WITH Respondent.

 

 

Charles A. Kuechenmeister, Panelist

Dated:  August 6, 2018

 

 

 

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