James Lawrence Smethers D/B/A Sabrage Media, Inc. v. Chuck Jeffries
Claim Number: FA1402001544281
Complainant is James Lawrence Smethers D/B/A Sabrage Media, Inc. (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is Chuck Jeffries (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mymachine.com>, registered with Network Solutions, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2014; the National Arbitration Forum received payment on February 19, 2014.
On February 19, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <mymachine.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2014 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@mymachine.com. Also on February 24, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist in these proceedings (the “Panel”).
Having reviewed the communications records, Panel finds that the National Arbitration 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 National Arbitration 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 asserts trademark rights in MY MACHINE and alleges that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding, nor did it make any informal submissions which Panel could have taken into account in reaching its decision.
The factual findings pertinent to the decision in this case are that:
1. Complainant has used the trademark MY MACHINE in connection with a magazine publication, website, and clothing products related generally to motorcycling;
2. Complainant owns United States Trademark Reg. No. 3,158,541, filed November 29, 2005, registered October 17, 2006 for the word trademark MY MACHINE;
3. The disputed domain name was registered on May 13, 1996 by a third party;
4. The domain name resolves to a basic holding webpage showing only a cog device;
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established that a trademark registered with a national authority is evidence of trademark rights for the purposes of paragraph 4(a)(i) of the Policy. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration for MY MACHINE, Panel is satisfied that it has trademark rights in that expression (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
Panel also finds the disputed domain name to be legally identical to Complainant’s trademark (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”)).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. That finding is unaffected by the observation best made here that the original registration of the domain name significantly predates Complainant’s use and registration of the trademark. Paragraph 4(a)(i) of the Policy has been consistently read such that determination of whether or not a complainant has rights in a trademark is independent of the chronology of the parties’ usage, a matter left for consideration under paragraph 4(a)(ii) and/or (iii).
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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 for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “Chuck Jeffries ” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
Complainant provides evidence that the domain name resolves to a rudimentary holding webpage showing a simple cog device. As such, there is no evidence that the disputed domain name has been used in connection with an offering of goods or services prior to notice of the dispute. Were it not for the additional consideration set out below, it would be open to Panel to find that Respondent had no apparent rights or interests in the disputed domain and so decide that the onus had shifted to Respondent (see, for example, Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
However, as noted already, the domain name was first registered in 1995 by a third party. Complainant submits that Respondent became the holder of the name in May 2010. Provided that were the case, it might have a fundamental impact on assessment of Respondent’s rights and bona fides (see, for example, Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) determining that, even though the disputed domain name was registered earlier, the respondent’s rights in the disputed domain name began when the domain name was transferred to the respondent, which postdated complainant’s trademark rights).
The evidence before Panel of the claim that Respondent only became the owner of the domain name in 2010 is, forensically, unclear not least because the relevant annexures to the Complainant are not fully legible. In other circumstances that flaw in the Complaint might be corrected by a Panel Order inviting Complainant to provide further and better particulars of the matter but in this case the paragraph 4(a)(iii) bad faith analysis makes that exercise otiose.
Given the following bad faith assessment, Panel finds it unnecessary to reach a final decision as to whether Complainant has made a prima facie case that Respondent lacks a right or legitimate interest in the domain name.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
Even making the assumption that Respondent became the holder of the domain name in 2010, there is no evidence showing it to be more likely than not (the relevant standard of proof in these proceedings) that Respondent was, when it acquired the domain name, primarily actuated for the reasons described by any of subparagraphs 4(b)(i)-(iii) above. The evidence is that, prior to notice of this dispute, the domain name resolved to an equally uninspirational holding page and that it was only after Respondent received Complainant’s letter of demand that it amended the page to show a cog device. Whether that was a result of churlishness or not is unknown but it shines no light on Respondent’s mental state at the time of registration. Nor, importantly, is that amendment to the holding page any sort of evidence that, for the purposes of paragraph 4(b)(iv), Respondent has used the domain name in bad faith.
Accordingly, Complainant’s arguments that Respondent registered the domain name to disrupt Complainant’s business, or sell the domain name to Complainant at profit, or gain commercially from its use, are unsupported and fail.
It therefore only remains to examine whether, independently from the per se scenarios of bad faith use and registration outlined above, it can be said that Respondent both registered and then used the domain name in bad faith. In that respect Panel has already commented on bad faith registration, but even assuming a finding adverse to Respondent on that question, there is no evidence of bad faith use. The fact that the holding page now shows a cog device and that, as Complainant argues, images of cogs or gears are related to motorcycles, other vehicles and the nominative meaning of the trademark, is an argument equally true of the domain name itself and in the absence of any other evidence of bad faith, nothing can be read from it. Finally, insofar as Complainant relies on the argument of so-called “passively holding”, Panel observes that there is no evidence that the renown of the trademark is such that the factors outlined in the seminal case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, are engaged.
Panel finds that Complainant has failed to show either bad faith use or registration and so has failed to establish the final limb of the Policy.
DECISION
Having failed to establish at least one of the elements required under the ICANN Policy, Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <mymachine.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: March 31, 2014
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