Bruce Molzan v. Mitar Miric
Claim Number: FA2002001883442
Complainant is Bruce Molzan (“Complainant”), represented by Karen B. Tripp, Texas, USA. Respondent is Mitar Miric (“Respondent”), Republic of Serbia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rugglesgreen.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 16, 2020; the Forum received payment on February 16, 2020.
On February 17, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rugglesgreen.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2020 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@rugglesgreen.com. Also on February 24, 2020, 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 23, 2020, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a prominent master chef based in Houston, Texas.
Complainant has rights in the RUGGLES GREEN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,725,963, registered Apr. 28, 2015). See Amend. Compl. Ex. D. Respondent’s <rugglesgreen.com> domain name is confusingly similar to Complainant’s mark, as Respondent fully incorporates the mark with only the space deleted and adds the “.com” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <rugglesgreen.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Respondent had no right to register or retain the domain name. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely passively holding the disputed domain name.
Finally, Respondent registered and used the <rugglesgreen.com> domain name in bad faith. Specifically, if Respondent is an individual that Complainant had a trademark dispute with previously, the domain name be used to support a subdomains redirection of Internet users to a competing website. Additionally, if Respondent is said individual, Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration. If not said individual, Respondent would have acted in bad faith for registering the disputed domain name opportunistically when Complainant missed the reregistration of the disputed domain name. Furthermore, Respondent is attempting to hide behind what appears to be a possibly fictitious address and has not provided full and accurate contact information to the Registrar of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, during the proceeding, Respondent sent several letters to the Forum by email which will be referred to in the course of this decision.
1. Complainant is a prominent master chef based in Houston, Texas.
2. Complainant has established its trademark rights in the RUGGLES GREEN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,725,963, registered Apr. 28, 2015).
3. Respondent opportunistically registered the <rugglesgreen.com> domain name in or about December 2018 when Complainant, who had been the registrant at a prior time, obtained the registration again but inadvertently omitted to renew the registration.
4. Respondent is merely passively holding the disputed domain name.
5. Since Respondent acquired the domain name he has evinced an intention to sell it by the use of the expressions “we can discuss about price” and “ I can sell it but we must talk about that…”.
6. The evidence enables the inference to be drawn that Respondent has no rights or legitimate interests in the domain name and that Respondent registered and has used the domain name in bad faith.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the RUGGLES GREEN mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,725,963, registered Apr. 28, 2015). See Amend. Compl. Ex. D. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the RUGGLES GREEN mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s RUGGLES GREEN mark. Complainant argues Respondent’s <rugglesgreen.com> domain name is identical or confusingly similar to Complainant’s mark, as Respondent fully incorporates the mark with only the space deleted and adds the “.com” gTLD. The removal of spaces and the addition of a gTLD is generally not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”).Complainant’s counsel has presented a great deal of evidence and argument to show that there is inevitable confusion between the domain name and the trademark. On a comparison between the two, the Panel finds that there is no material difference between them. Therefore, the Panel finds that Respondent’s <rugglesgreen.com> domain name is identical and/or confusingly similar to the RUGGLES GREEN trademark under Policy ¶ 4(a)(i).
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s RUGGLES GREEN trademark and to use it in its domain name;
(b) Respondent registered the domain name in or about December 2018;
(c) Respondent opportunistically registered the <rugglesgreen.com> domain name in or about December 2018 when Complainant, who had been the registrant at a prior time, obtained the registration again but inadvertently omitted to renew the registration;
(d) The domain name does not resolve to an active website and Respondent appears to have passively held it;
(e) Respondent has engaged in these activities without the consent or approval of Complainant;
(f) Complainant argues that Respondent has no rights or legitimate interests in the <rugglesgreen.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a 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 Panel notes the WHOIS of record identifies the Respondent as “Mitar Miric” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <rugglesgreen.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(g) Complainant argues that Respondent fails to use the <rugglesgreen.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is merely passively holding the disputed domain name. Inactively holding a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage which appears to have no substantive content. See Amend. Compl. Ex. A-5. The Panel has examined the website and finds that although it contains some headings of various categories of goods and services , they have no text or other content and the site also carries the words: ”No posts to display”. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent and Respondent has not made a rebuttal of the matters referred to above , despite having the opportunity to file a Response.
Moreover, in the course of the proceeding, Respondent sent four emails to the Forum, so there is no doubt that the Respondent is the registrant of the domain name and that he had received the Complaint and its annexes and the Written Notice of the Complaint.
On February 24, 2020,Respondent wrote saying: “please can you explain in in one - two words what you want from me? I really don't have time to read 8 emails with 10 attachments inside. Thanks.”
On February 24, 2020, Respondent wrote again saying :“As I said before, I really don't have time to read all that, now I'm living on North pole, here is temperature -22 of Celsius now and do you think I don't have anything else to do. Please, be nice and tell me in few words how can I help you.”
On February 25, 2020, Respondent wrote again saying: “Ok, I read part of your emails. I legally buy that domain at Godaddy Auction before few months, I'm not related to any restaurant or food-house. As you can see, web site is empty, and my content will not be related to any restaurant or something like that. Anyway, if you want this domain, we can discuss about price.”
On February 25, 2020, Respondent wrote again, saying: “I still don't know what you want me to do. I regularly buy this domain, I'm not related to that restaurant and I'm not provided any informations about that. Also, I sand your emails to my lawyer, and he also don't understand what you want from me. If you want to take my domain for free, that will not be a happen. I can't give it for free. I can sell it but we must talk about that, and you (and your client) didn't start conversation very well.”
From that correspondence it is apparent that Respondent has been more interested in selling the domain name than in using it for a legitimate purpose. That is particularly so in view of the fact that Respondent has used the expressions “we can discuss about price” and “ I can sell it but we must talk about that…”.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and used the <rugglesgreen.com> domain name in bad faith. Specifically, Complainant proposes one interpretation of the history of this matter to the effect that the Respondent is an individual with whom Complainant had previously a trademark dispute, in which case the domain name has been registered and used to support a subdomain for the purpose of redirecting Internet users to a competing website. Registering a disputed domain name for the purpose of attracting Internet users to a competing service may be evidence of bad faith under Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). Here, Complainant submits and established by persuasive evidence the Panel accepts, that a subdomain was discovered that redirects Internet users to a competing restaurant in the Houston area and that this subdomain is maintained via the disputed domain name. Complainant also provides a screenshot of the subdomains resolving webpage as evidence of this allegation. See Amend. Compl. Ex. A-1. Clearly, such a use of a domain name suggests strongly that it was registered and used in bad faith. Therefore, the Panel finds Respondent registered and used the <rugglesgreen.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant proposes an alternative interpretation that, if Respondent is an individual that Complainant had a trademark dispute with previously, Respondent had knowledge of Complainant’s rights in the RUGGLES GREEN mark at the time of registering the <rugglesgreen.com> domain name. To succeed , actual notice would have to be shown. The Panel draws the inference from the evidence that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and that actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent was party to a lawsuit about Complainant’s mark. As such, the Panel may determine whether Respondent did have actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered the disputed domain name in bad faith, as Respondent took advantage of Complainant’s failure to renew the domain name. Registration of a disputed domain name that was previously registered by the complainant who merely missed the renewal date may be evidence of bad faith under Policy ¶ 4(a)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (inferring that the respondent had knowledge that the <tercent.com> domain name previously belonged to the complainant when the respondent registered said domain name the very same day the complainant’s registration lapsed). Complainant has also cited several other decisions that support this approach. Here, Complainant outlines the reasons for missing the renewal date of the disputed domain name and points out that the Respondent registered it the first day it became available. Complainant’s counsel presents a strong case to show that the registration of the domain name by Respondent in the circumstances proven, show that the registration was in bad faith. Complainant also cites several prior UDRP decisions where panelists have made similar findings. Therefore, the Panel finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, the Panel reiterates that the emails sent by Respondent to the Forum during the proceeding and set out above, show that Respondent was prepared to sell the domain name to Complainant and that accordingly Respondent was motivated by making money from his registration and use of the domain name.
Fifthly, Complainant argues Respondent is attempting to hide behind a possibly fictitious address, which is indicative of Respondent’s bad faith. Registering a disputed domain name with false contact information may be evidence of bad faith under Policy ¶ 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). See also, the decision cites by Complainant, Morgan Stanley v. zhengxin huang, FA 1906001849226 (Forum July 22, 2019). Here, Complainant argues, after its counsel investigated the matter thoroughly, that Opuzen, Viena, information apparently provided by Respondent to the Registrar at the time it registered the domain name, is false and misleading as the places mentioned do not exist in the Republic of Serbia, signified by "rs" in the WHOIS, information also provided by Respondent. Therefore, the Panel finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the RUGGLES GREEN mark and in view of the conduct that Respondent has engaged in, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rugglesgreen.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 24, 2020
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