THINGIFY, INC. v. Ross Colquhoun
Claim Number: FA1405001558220
Complainant is THINGIFY, INC. (“Complainant”), represented by Charles C.H. Wu of Law Offices of Charles C.H. Wu & Associates, APC., California, USA. Respondent is Ross Colquhoun (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thingify.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David S. Safran as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 7, 2014; the National Arbitration Forum received payment on May 7, 2014.
On May 9, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <thingify.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 May 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 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@thingify.com. Also on May 9, 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.
A timely Response was received and determined to be complete on May 29, 2014.
Complainant submitted an Additional Submission, received June 3, 2014.
On June 4, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran as Panelist.
Having reviewed the communications records, the Administrative Panel (the "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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it uses the THINGIFY mark in connection with computer graphics design services, has registered the THINGIFY mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,375,079 filed October 5, 2012; registered July 30, 2013), and that the <thingify.com> domain name is identical to Complainant’s THINGIFY mark. Complainant also asserts that Respondent is not commonly known by the disputed domain name, has made no use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, the disputed domain name resolving to a message: “Sorry! This site is not currently available,” and that from at least February 9, 2011 through January 6, 2014, the disputed domain name resolved to another domain name/website operated by Respondent. See Complainant’s Ex. 6, 7 and 8. Respondent registered and maintains the registration of the disputed domain name for the purpose of selling, renting, or otherwise transferring the domain name for consideration in excess of out-of-pocket expenses. See Complainant’s Ex. 11. Complainant also contends that Respondent has used the disputed domain name to attract Internet users to Respondent’s own website by creating confusion as to Complainant’s affiliation with the <thingify.com> domain name. Respondent commercially benefits from the resulting confusion.
B. Respondent
Respondent states that he registered the <thingify.com> domain name on May 8, 2005, and Complainant did not receive USPTO registration until July 30, 2013. Respondent is not attempting to interfere with the Complainant’s branding efforts and urges that Complainant’s company did not exist at the time Respondent registered the disputed domain name. Respondent also asserts that the term “thingify” refers to the process of turning ideas into things and his use of the <thingify.com> domain name is in connection with a bona fide offering of goods and services, Respondent having used the disputed domain name to direct Internet users to two of his other companies, Origamiinc.com and Plydea.com. Respondent urges that both companies create things from ideas, or “thingify.” Respondent also contends that he has received offers from Complainant for the disputed domain name, but the offers were too low, and Complainant rejected Respondent’s counteroffer. Furthermore, Respondent contends that he has not registered the disputed domain name for the purpose of disrupting Complainant’s business, nor has Respondent attempted to confuse Internet users as to Complainant’s association with the resolving webpage.
C. Additional Submissions
Complainant contends that Respondent has conceded that he is not widely known by the disputed domain name. Additionally, Complainant asserts that Respondent is using an illegitimate pretext in claiming he “thingifies” ideas into products. Respondent made absolutely no use of “thingify” as a verb or descriptive term in marketing his goods until after he received Complainant’s cease-and-desist letter
Complainant’s own statement of facts and Whois evidence demonstrates that Respondent registered the domain name at issue long prior to the date of first use of the THINGIFY mark by Complainant as well as well prior to application and registration dates for Complainant’s trademark registration.
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 the Policy Paragraph 4(a)(iii) finding below, discussion of this factor is unnecessary.
In view of the Policy Paragraph 4(a)(iii) finding below, discussion of this factor is unnecessary.
The evidence establishes that Complainant’s brand did not exist at the time Respondent registered the disputed domain name, Respondent having registered the <thingify.com> domain name on May 8, 2005 (see Whois, Complainant’s Annex), while Complainant did not receive USPTO registration until July 30, 2013 based on a first use of September 28, 2012 (see, Reg. No. 4,375,079, Complainant’s Annex 5). In Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007), the Panel determined that the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark. Accordingly, this Panel has determined that Respondent did not register the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).“
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <thingify.com> domain name REMAIN WITH Respondent.
__________________________________________________________________
David S. Safran, Panelist
Dated: June 9, 2014
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