Municipal Emergency Services, Inc. v. Steven Potter
Claim Number: FA2102001930833
Complainant is Municipal Emergency Services, Inc. (“Complainant”), represented by Jeffrey M. Rosenfeld of KRONENBERGER ROSENFELD, LLP, California, USA. Respondent is Steven Potter (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <revolveairsystems.com>, <revolveair.com>, and <revolveair-systems.com>, registered with NameCheap, Inc.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 3, 2021; the Forum received payment on February 3, 2021.
On February 4, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <revolveairsystems.com>, <revolveair.com>, and <revolveair-systems.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2021 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@revolveairsystems.com, postmaster@revolveair.com, postmaster@revolveair-systems.com. Also on February 8, 2021, 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 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Municipal Emergency Services, Inc., markets and sells equipment for firefighting, law enforcement, confined space operations, urban search and rescue, wildland firefighting, and emergency medical services. Complainant has rights in the REVOLVEAIR mark through use in commerce since 1995 by its predecessor-in-interest, and through registration with the United States Patent and Trademark Office (“USPTO”) in 2017. Respondent’s <revolveairsystems.com>, <revolveair.com>, and <revolveair-systems.com> domain names, all registered on August 3, 2020, are identical or confusingly similar to Complainant’s REVOLVEAIR mark, only differing by the addition of the generic term “systems”, a hyphen, and/or the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <revolveairsystems.com>, <revolveair.com>, and <revolveair-systems.com> domain names as it is not commonly known by the disputed domain names and is neither an authorized user or licensee of the RESOLVEAIR mark. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Instead, Respondent only uses the disputed domain names to host parked websites offering the domain names for sale.
Respondent registered and uses the <revolveairsystems.com>, <revolveair.com>, and <revolveair-systems.com> domain names in bad faith. Respondent purchased the disputed domain names soon after Complainant announced that it had acquired the RESOLVEAIR mark through acquisition and it offers the domain names for sale. Additionally Respondent disrupts Complainant’s business by hosting inactive “for sale” websites at the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) each of the domain names registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being used by Respondent 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 and evidence 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 and supported 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”).
Complainant asserts rights in the RESOLVEAIR mark through its registration with the USPTO. Registration of a mark with a national or regional trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registration certificates. Thus, the Panel finds that Complainant has rights in the RESOLVEAIR mark under Policy ¶ 4(a)(i).
Next, Complainant argues that each of Respondent’s <revolveairsystems.com>, <revolveair.com>, and <revolveair-systems.com> domain names are identical or confusingly similar to Complainant’s RESOLVEAIR mark. In the case of <revolveair.com>, the domain name is identical, only differing by the addition of the “.com” gTLD. Merely adding a gTLD does not negate confusing similarity between a domain name and a mark under 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 may find that the disputed domain name is identical to Complainant’s mark.”) For the other two domain names, the only differences are the addition of the generic term “systems” and the “.com” gTLD, with one domain also including a hyphen. Such changes do not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”) Therefore, the Panel finds that each of the disputed domain names is identical or confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 interests in the <revolveairsystems.com>, <revolveair.com>, and <revolveair-systems.com> domain names as it is not commonly known by the disputed domain names and is neither an authorized user or licensee of the RESOLVEAIR mark. Relevant WHOIS information may inform the question of whether a Respondent is or is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Here, the public WHOIS information of record indicates that the registrant of the disputed domain names utilized a privacy service when registering the names. Additionally, upon submission of the present Complaint, the registrar of the disputed domain names confirmed that the registrant’s listed name is “Steven Potter”. Respondent has filed to response or made any other submission in this case and so there is nothing in the record to indicate that Respondent is known otherwise or to dispute Complainant’s contention that it never authorized Respondent to utilize the REVOLVEAIR mark. Thus, the Panel finds no ground to support a finding that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <revolveairsystems.com>, <revolveair.com>, and <revolveair-systems.com> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, but rather hosts parked websites without substantive content. Using a disputed domain name to host an inactive website does not qualify as a bona fide offer of goods or services, nor can it constitute a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides screenshots of the websites for the disputed domain names and these contain only the logo of a well-known domain name auction provider and a blank field in which users are invited to “Make an offer on this domain”. The Panel does not find this use to provide Respondent with any rights or legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant argues that Respondent lacks rights or legitimate interests in the <revolveairsystems.com>, <revolveair.com>, and <revolveair-systems.com> domain names as it is attempting to offer the domain names for sale. Attempting to sell or lease an infringing domain name evinces a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA 1614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”) As noted, Complainant provides screenshots of the resolving websites for the disputed domain names which display Respondent’s attempt to sell the domain names through an auction provider. Upon a preponderance of the evidence presented in this case, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Inherently prerequisite to a finding of bad faith under Policy ¶ 4(a)(iii) is some attribution of knowledge of a complainant’s trademark, whether actual or based upon a conclusion that a respondent should have known of the mark. See, Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”). See also WIPO Overview 3.0, par. 3.1.1 (when examining whether “circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark”, Panels may consider such issues as “the respondent’s likely knowledge of the complainant’s rights”). Complainant states that Respondent had knowledge of the REVOLVEAIR mark at the time it registered the disputed domain names as such registrations occurred three days after Complainant issued a press release announcing its acquisition of a company that was the prior owner of the mark. A copy of this press release has been submitted into evidence. This scenario of opportunistic domain name registration is not uncommon. See, e.g., Gilead Sciences, Inc. v. Whois Agent, Domain Protection Services, Inc. / Syed Hussain, IBN7 Media Group, D2020-1916 (WIPO Sep. 21, 2020) (“The disputed domain name, <gileadfortyseven.com>, was registered by Respondent on March 2, 2020, the same day Complainant published a press release announcing its acquisition of Forty Seven, Inc.”); Saudi Arabian Oil Co v. Bander Alotabi, FA 1763211 (Forum Feb. 7, 2018) (opportunistic bad faith found where “Complainant announced the IKTVA name in a press release a month prior to Respondent’s registration of the [iktva.com] domain name.”) Respondent has not participated in this case and so it does not contest Complainant’s assertions. Further, Complainant’s mark uses an unconventional combination of the words “revolve” and “air”. On the basis of the available evidence, the Panel finds it more likely than not that Respondent had actual knowledge of, and copied Complainant’s mark at the time it registered the disputed domain name.
In asserting bad faith registration and use, Complainant points to the fact that Respondent is offering to sell the <revolveairsystems.com>, <revolveair.com>, and <revolveair-systems.com> domain names through their respective resolving websites. Per Policy ¶ 4(b)(i), an offer to sell an infringing domain name to the Complainant may support a finding of bad faith registration and use. See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”) As previously noted, Complainant provides screenshots of the resolving websites for the disputed domain names, which declare that each domain name is for sale, and provides a form to submit an offer. In light of the three-day timing between Complainant’s press release announcing its acquisition of the REVOLVEAIR mark and the registration of the domain names the Panel finds it reasonable to accept the premise that Respondent intended that these sale offers be directed at Complainant. As Respondent has not contested this or sought to explain its actions, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant also claims that Respondent registered and uses the <revolveairsystems.com>, <revolveair.com>, and <revolveair-systems.com> domain names in bad faith as Respondent disrupts Complainant’s business by hosting an inactive parked website. Previous Panels have held that using an infringing domain name to host an inactive website may show bad faith disruption under Policy ¶ 4(b)(iii). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii)). Here, Complainant provides screenshots of the websites to which the disputed domain names resolve and these only display the logo of a well-known domain name auction provider and a request that users “Make an offer on this domain”. The websites contain no substantive content. Based upon this evidence and Complainant’s assertions, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <revolveairsystems.com>, <revolveair.com>, and <revolveair-systems.com> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 4, 2021
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