DECISION

 

Chris Museler v. Super Privacy Service LTD c/o Dynadot

Claim Number: FA1902001831880

 

PARTIES

Complainant is Chris Museler (“Complainant”), represented by Aaron Arce Stark of Arce Stark & Haskell, LLP, Washington DC, USA.  Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chrismuseler.com>, registered with Dynadot Llc.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 28, 2019; the Forum received payment on February 28, 2019.

 

On March 2, 2019, Dynadot Llc confirmed by e-mail to the Forum that the <chrismuseler.com> domain name is registered with Dynadot Llc and that Respondent is the current registrant of the name.  Dynadot Llc has verified that Respondent is bound by the Dynadot Llc 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 March 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2019 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@chrismuseler.com.  Also on March 8, 2019, 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 March 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant is a well-known journalist in Portsmouth, RI heavily involved in the yachting, sailing, and boating industries. Complainant has been published in Outside, International Yachtsman, and Sailing World, among many others. Complainant has common law rights in the CHRIS MUSELER mark based on its use of the mark within the journalism industry. Respondent’s <chrismuseler.com> domain name is identical to Complainant’s mark.

 

2.    Respondent has no rights or legitimate interests in the <chrismuseler.com> domain name. There is no evidence to suggest that Respondent is known by the disputed domain name and Complainant did not authorize Respondent to use the mark for the disputed domain name. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to make active use of the disputed domain name. Further, Respondent intends to ransom the domain name back to Complainant.

 

3.    Respondent registered and uses the <chrismuseler.com> domain name in bad faith. Respondent offers the domain name for sale on the open market. Additionally, Respondent fails to make active use of the disputed domain name.

 

B.   Respondent:

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <chrismuseler.com> domain name is confusingly similar to Complainant’s CHRIS MUSELER mark.

 

2.    Respondent does not have any rights or legitimate interests in the <chrismuseler.com> domain name.

 

3.    Respondent registered or used the <chrismuseler.com> domain name in bad faith.

 

DISCUSSION

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, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules 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.”).

 

Identical and/or Confusingly Similar

Complainant claims it holds common law rights in the CHRIS MUSELER mark and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the

mark’s having acquired secondary meaning.”). Complainant argues that it has generated a secondary meaning through its use of the mark in connection with Complainant’s journalism since 2003. Complainant provides screenshots of Complainant’s use of the mark in connection with professional writing, photography, and videography. See Amend. Compl. Ex. B. Accordingly, the Panel finds that Complainant does hold common law rights in the mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s <chrismuseler.com> domain name is identical to Complainant’s mark. The Panel notes that the disputed domain name merely adds a generic top-level domain (“gTLD”) to Complainant’s fully incorporated mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel finds that the disputed domain name is identical to Complainant’s mark.”). The Panel therefore finds that the <chrismuseler.com> domain name is identical to the CHRIS MUSELER mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent lacks rights or legitimate interest in the <chrismuseler.com> domain name as there is no evidence to suggest Respondent is known by the disputed domain name and Complainant did not authorize Respondent to use the CHRIS MUSELER mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Super Privacy Services LTD, c/o Dynadot,” and there is no other evidence to suggest that Respondent was authorized to use the CHRIS MUSELER mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Complainant also contends Respondent fails to make active use of the <chrismuseler.com> domain name. Failure to use a disputed domain name in connection with an active webpage can indicate a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). The Panel agrees and finds Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues Respondent offered for ransom the <chrismuseler.com> domain name on the open market. A general offer to sell a disputed domain name for in excess of out-of-pocket costs can provide evidence of bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). The Panel notes that Complainant does provide evidence of its own prior ownership of the domain name, which supports Complainant’s argument. See Amend. Compl. Ex. A. Accordingly, the Panel agrees that Respondent registered the domain name with the intent to sell to Complainant or a competitor, for an excess amount, and it finds bad faith under Policy ¶ 4(b)(i).

 

Additionally, Complainant contends Respondent fails to make an active use of the <chrismuseler.com> domain name. Failure to actively use a disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel agrees, and accepts this as evidence of bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <chrismuseler.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

April 11, 2019