Traeger Pellet Grills LLC v. Tomasz Kurlenko
Claim Number: FA2203001987275
Complainant is Traeger Pellet Grills LLC (“Complainant”), represented by Christopher M. Dolan of Barnes & Thornburg LLP, Illinois, USA. Respondent is Tomasz Kurlenko (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <traegergrill.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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 7, 2022. The Forum received payment on March 7, 2022.
On March 8, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <traegergrill.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 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2022 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@traegergrill.com. Also on March 9, 2022, 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 31, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 is the largest manufacturer of premium wood pellet barbeque grills in the world, and has developed and maintained a national reputation for high quality products. Since at least as early as 1986, Complainant itself and through its predecessors-in-interest and affiliates has continuously and extensively engaged in marketing and selling its wood pellet grills and related goods and services under its famous TRAEGER mark.
Complainant has rights in the TRAEGER mark both at common law and through numerous registrations of the mark, including with the United States Patent and Trademark Office (“USPTO”). Respondent’s <traegergrill.com> domain name is identical or confusingly similar to Complainant’s TRAEGER mark.
Respondent has no rights or legitimate interests in the <traegergrill.com> domain name. Complainant has not authorized or licensed Respondent to use the TRAEGER mark, nor is Respondent commonly known by the domain name. Further, Respondent is not using the domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website redirects users to third-party competing links.
Respondent registered and uses the <traegergrill.com> domain name in bad faith. Respondent attempts to attract users for commercial gain as Respondent uses a confusingly similar domain name to redirect users to a website with pay-per-click competing links. Further, as a result of Complainant’s extensive investment in the TRAEGER mark, including widespread advertising and promotion of Complainant’s goods and services under the mark, and sales of Complainant’s goods and services under the mark, the TRAEGER mark had become famous well before Respondent’s registration and use of the <traegergrill.com> domain name. This evidence strongly indicates that Respondent had constructive, if not actual, notice of Complainant’s rights to the famous TRAEGER mark prior to registering the domain name.
Additionally, Respondent’s combination in the domain name of Complainant’s TRAEGER mark with the term “grill,” which is closely associated with Complainant and its goods and services, demonstrates that Respondent had actual notice of Complainant’s prior use of and rights to the TRAEGER mark. Respondent’s actual notice is further demonstrated by the sponsored links displayed on Respondent’s website, which display Complainant’s TRAEGER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant has shown that it has rights in the TRAEGER mark through many registrations of the mark in many countries, the earliest of which being with the USPTO (Reg. No. 3,244,718, registered on May 22, 2007, claiming first use in commerce on January 1, 1986).
The Panel finds Respondent’s <traegergrill.com> domain name to be confusingly similar to Complainant’s TRAEGER mark, as it incorporates the mark in its entirety, only adding the generic term “grill”, which does not distinguish the domain name from the mark, and the inconsequential “.com” generic top-level domain (gTLD), which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Although the <traegergrill.com> domain name was registered on July 17, 2002, the relevant date on which to consider whether Respondent has rights or legitimate interests in the domain name is the date of the Complaint. The domain name resolves to a website displaying pay-per-click links to competitors of Complainant.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <traegergrill.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the goods promoted on that website. This is evidence of registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Bad faith use of the kind identified in paragraph 4(b)(iv) of the Policy is evidence of both bad faith registration and bad faith use but such evidence is not necessarily conclusive, since it may be weighed against any evidence of good faith registration. See Passion Group Inc. v. Usearch, Inc., eResolution Case No. AF-0250, followed in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905. No amount of subsequent bad faith use can convert a good faith registration into a bad faith registration: Green Tyre Company Plc. v. Shannon Group, WIPO Case No. D2005-0877.
As noted, the <traegergrill.com> domain name was registered on July 17, 2002, almost 5 years before Complainant’s first registration of its TRAEGER mark. According to the WIPO Jurisprudential Overview 3.0, paragraph 3.8.1, 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.
Complainant claims it has used the TRAEGER mark since 1986 and that it has become famous. However, Complainant has produced no evidence to support these assertions. Paragraph 1.3 of the Overview provides; “Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.”
Despite Complainant’s failure to provide any evidence of its use of the TRAEGER mark prior to Respondent’s registration of the <traegergrill.com> domain name and despite the absence of any Response, the Panel considers that the TRAEGER mark is one of a kind and is not descriptive. Its combination in the domain name with the word “grill” strongly indicates that Respondent was aware of Complainant’s business when registering the domain name.
The Panel concludes that, in the circumstances of this case, there is no evidence of good faith registration which can be weighed against the clear evidence of bad faith use of the kind identified in paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that Complainant has established this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <traegergrill.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: April 1, 2022
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