Tank Goodness MSPR, LLC v. Dennis and Anne Tank / Tank Goodness, Inc.
Claim Number: FA1502001607063
Complainant is Tank Goodness MSPR, LLC (“Complainant”), represented by Carl E. Christensen of Christensen Law Office PLLC, Minnesota, USA. Respondent is Dennis and Anne Tank / Tank Goodness, Inc. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tankgoodness.com>, registered with TUCOWS, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2015; the Forum received payment on March 2, 2015.
On February 27, 2015, TUCOWS, INC. confirmed by e-mail to the Forum that the <tankgoodness.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 March 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2015 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@tankgoodness.com. Also on March 10, 2015, 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 April 8, pursuant to , 2015, Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant owns the TANK GOODNESS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,488,074, first used in commerce March 5, 2013, filed July 11, 2013, registered Feb. 25, 2014). Complainant also owns the TANK GOODNESS mark through common law rights.
Complainant has statutory and common-law rights in the TANK GOODNESS mark that are evidenced by its exclusive license to use the mark and a prior registration of the TANK GOODNESS trademark: these rights date back to July of 2003. Complainant uses the TANK GOODNESS mark in connection with its cake and cookie business.
The <tankgoodness.com> domain name is identical to Complainant’s TANK GOODNESS mark. The domain name contains the Complainant’s mark in its entirely and merely adds a generic top-level domain “.com” to the domain name.
Respondent is no longer in the cake-making business and has abandoned its trademark and business.
Respondent lacks rights or legitimate interests in the <tankgoodness.com> domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent is no longer in the cake-making business and has abandoned its trademark; therefore, Respondent has no rights in the <tankgoodness.com> domain name. Additionally, Respondent has attempted to sell the disputed domain name to Complainant for an excess of its out-of-pocket costs. The website resultant to the <tankgoodness.com> domain name currently has false information regarding the ownership of the TANK GOODNESS brand and information regarding Complainant, including the contact information for the licensed territories of the twin cities of Minneapolis and Saint Paul, Minnesota and the city of Rochester, Minnesota. The proper website for complainant’s business is located at the <tankgoodnesstwincities.com> domain name.
Respondent has engaged in bad faith registration and use of the <tankgoodness.com> domain name. Respondent has attempted to sell the disputed domain name to Complainant for a fee in excess of out-of-pockets costs. Further, Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Finally, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The at-issue domain name was registered prior to Complainant having rights in the TANK GOODNESS mark allowing it exclusive use of the mark in an identical or confusingly similar domain name.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant currently owns the TANK GOODNESS mark through its registration with the USPTO in connection with its cake and cookie business (Reg. No. 4,488.074, first used in commerce March 5, 2013, filed July 11, 2013, registered Feb. 25, 2014). Complainant’s registration of its TANK GOODNESS mark with the USPTO establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Therefore, Complainant establishes rights in the TANK GOODNESS mark under Policy ¶ 4(a)(i), dating back to July 11, 2013. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
Notwithstanding the foregoing indicating Complainant’s rights in a mark pursuant to Policy ¶4(a)(i), a complainant’s successful demonstration of a respondent’s bad faith under Policy ¶4(a)(iii) almost universally requires showing that complainant’s trademark rights predate the time the respondent registered the at-issue domain name.
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
WIPO, WIPO Overview of WIPO Panel Views on Selected UDRP Questions ¶ 2.1 (2d ed.).
It is axiomatic that if a complainant does not have trademark rights at the time of an at-issue domain name’s registration (even though it may have such rights at the time of the parties’ dispute), there can be no bad faith registration on the part the domain registrant/respondent. Numerous decisions support this very logical proposition. For example see: Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001); Digital Vision, Ltd. v. Advanced Chemill Sys., D2001-0827 (WIPO September 23, 2001); PrintForBusiness B.V v. LBS Horticulture, D2001-1182 (WIPO December 21, 2001).
Here, Respondent registered its <tankgoodness.com> domain name on July 29, 2003, well prior to Complainant’s TANK GOODNESS USPTO trademark registration. Nevertheless, Complainant may establish it had pre-registration common law rights in the mark by submitting appropriate evidence that the mark acquired secondary meaning before the domain name’s registration. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). But according to the operative TANK GOODNESS USPTO registration record, Complainant first used the TANK GOODNESS mark on March 5, 2013, and while common law rights might arise subsequent to use in commerce, they cannot precede a mark’s use in commerce.
Complainant still claims that it has rights dating back as far as July, 2003, not only because it had common law rights in the mark but ostensibly because it was granted an exclusive license to use the TANK GOODNESS mark regarding several discreet geographical marketing territories. The licensed rights –claims Complainant- relate back to 2003 via a previous trademark registration remarkably held by Respondent. Complainant concludes that it is entitled to rely on its predecessor’s (Respondent’s) long use of the TANK GOODNESS mark arguing that its exclusive license transfers the appurtenant goodwill just as an assignment would. The Panel disagrees. While Complainant may have a license concerning the TANK GOODNESS mark and such license may, for certain purposes, relate back to the time of the at-issue domain name’s registration in 2003, there is no evidence that the subject license grants Complainant rights superior to those of Respondent, or anyone else, regarding the use of the mark in a domain name. Complainant’s vague license seems to only concern discreet sales/marketing territories rather than global uses of the TANK GOODNESS mark, such as its use in a domain name. A license, which generally allows a licensee to use a mark in a particular manner, is not the same as an assignment -whereby a mark’s owner transfers its property rights in a mark to the assignee. See McCarthy on Trademarks and Unfair Competition, § 18:52 (4th Ed. 2000) (stating, “A licensee’s use [of a mark] inures to the benefit of the licensor-owner of the mark and the licensee acquires no ownership rights in the mark itself.”) Without knowing the precise terms of the license referred to by Complainant, there is no compelling basis from which the Panel might conclude that Complainant‘s rights, in 2003, included an exclusive right to use the TANK GOODNESS mark in a domain name superior to the mark’s owner rights.
Given the foregoing, the Panel concludes that Complainant cannot meet its burden regarding Respondent’s bad faith registration and use of the domain name under Policy ¶4(a)(iii). The remaining unaddressed issues concerning the at-issue domain name’s confusing similarity to the TANK GOODNESS under Policy ¶4(a)(i), and Respondent’s rights and interests under Policy ¶4(a)(ii), are moot. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary)
Having failed to establish at least one element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <tankgoodness.com> domain name REMAIN WITH Respondent.
Paul M DeCicco, Panelist
Dated: April 16, 2015
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