Chris Pearson v Domain Admin / Automattic, Inc.

 

 

DECISION

 

Chris Pearson v. Domain Admin / Automattic, Inc.

Claim Number: FA1504001613723

PARTIES

Complainant is Chris Pearson (“Complainant”), represented by Darin Siefkes of The Law Office of Darin Siefkes, PLLC, Texas, USA.  Respondent is Domain Admin / Automattic, Inc. (“Respondent”), represented by Joseph Gratz of Durie Tangri LLP, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thesis.com>, registered with MarkMonitor Inc.

 

PANEL

The undersigned certify that they acted independently and impartially and that to the best of their knowledge, they have no known conflict in serving as Panelists in this proceeding. Hon. Neil Anthony Brown, QC, Hon. Richard DiSalle, and Hon. Carolyn Marks Johnson, sit as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically April 9, 2015; the Forum received payment April 9, 2015.

 

On April 13, 2015, MarkMonitor Inc. confirmed by e-mail to the Forum that the <thesis.com> domain name is registered with MarkMonitor Inc. and that Respondent is the current registrant of the name.  MarkMonitor Inc. verified that Respondent is bound by the MarkMonitor Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 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@thesis.com.  Also on April 21, 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.

 

The Panel accepted and reviewed Respondent’s late Response in the interest of justice and such other materials in the submission.

 

On June 15, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Neil Anthony Brown, QC, Hon. Richard DiSalle, and Hon. Carolyn Marks Johnson to sit as Panelists. Judge DiSalle is Chair; Judge Johnson writes for the Panel.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant’s Contentions in this Proceeding:

 

  1. Policy ¶ 4(a)(i)
    1. Complainant has rights in the THESIS mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,039,583, registered October 11, 2011).
    2. Respondent’s disputed domain name <thesis.com> is identical to Complainant’s THESIS mark except for the inclusion of the generic top-level domain name (“gTLD”) “.com.” which does not distinguish the domain from Complainant’s mark.  
  2. Policy ¶ 4(a)(ii)
    1. Respondent does not have any products named “thesis;” nor does it offer services using the “thesis” name.
    2. Respondent’s registration of the disputed domain name, which is identical to Complainant’s mark, to sell competing products, likely violates Complainant’s trademark rights. 
  3. Policy ¶ 4(a)(iii)
    1. Respondent purchased the disputed domain name to confuse and redirect customers and potential customers to Respondent’s competing webpage.

 

B.  Respondent’s Contentions in this Proceeding:

 

  1. The Panel notes that Respondent failed to submit its response within the requisite time period, failing to comply with ICANN Rule #5.  In its discretion, the Panel considered Respondent’s arguments in the late filed Response in the interest of justice.

 

  1. Policy ¶ 4(a)(i)
    1. Respondent does not contest this point.
  2. Policy ¶ 4(a)(ii)
    1. Respondent asserts that “Thesis” is a generic term.  See Resp., at Attached Ex. A
    2. Respondent is using the disputed domain name in connection with a blogging site.

                                          i.    Respondent maintains that such use serves as an invitation to Internet users to discuss, object, and debate certain topical issues and, therefore, Respondent’s use falls within the definition of the term “thesis” as referenced by Respondent’s Attached Exhibit A.

    1. Allegedly, Respondent and Complainant were approached by a third-party relative to the purchase of the <thesis.com> domain name, and Respondent was the high bidder, paying $100,000.00 for the domain name.

                                          i.    Such purchases have been considered a bona fide offering of goods under Policy ¶ 4(c)(i).

  1. Policy ¶ 4(a)(iii)
    1. Complainant has not sufficiently proven Respondent’s bad faith with supporting evidence.
    2. While visitors to <thesis.com> are redirected to <themeshaper.com>, such redirection furthers Respondent’s purpose in providing a blogging site.

                                          i.    Such use is free of charge, and therefore Policy ¶ 4(b)(iv) is not applicable.

                                         ii.    The resolving site does not claim to be Complainant or an agent of Complainant, and therefore does not create confusion as to the source, sponsorship, affiliation, or endorsement of the <thesis.com> domain name with Complainant.

 

  1. The Panel notes that the disputed domain name was created November 8, 1998. Complainant’s registration of the THESIS mark was dated October 11, 2011.

 

Preliminary Issue: Deficient Response

 

Respondent submitted its Response June 2, 2015, missing the filing date and therefore failing to comply with ICANN Rule #5(a) and/or the Annex to the Supplemental Rules.  The Panel, at its discretion, considered the deficient Response in the interest of justice. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).

 

 

FINDINGS

 

Complainant established legal rights and legitimate interests in the mark contained in its entirety within the disputed domain name.

 

Respondent failed to submit extrinsic proof to support the claim of rights or interests in the disputed domain name.

 

The disputed domain name is identical to Complainant’s legal and protected mark.

 

Complainant failed to bring sufficient proof to show that Respondent registered and used the disputed domain name in bad faith.

 

DISCUSSION

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 Complainant to 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.

 

Identical or Confusingly Similar:

 

Complainant first claims that it has established rights in the THESIS mark through registration with the USPTO (Reg. No. 4,039,583, registered October 11, 2011). Registration of a mark with the USPTO is sufficient to establish a Complainant’s rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).  Thus, the Panel finds that Complainant established rights in the THESIS mark.

 

Complainant contends that Respondent’s disputed domain name <thesis.com> is identical to Complainant’s THESIS mark.  The Panel notes that the disputed domain name includes Complainant’s mark in its entirety and the gTLD “.com.”  Previous panels have held that the addition of a gTLD does not affect a finding of indenticality.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).  In light of holdings finding gTLDs irrelevant to a finding that the disputed domain name is identical to Complainant’s mark; thus, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(i). 

 

The Panel finds that the disputed domain name is identical to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). 

 

Rights to or Legitimate Interests:

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent is not commonly known by the THESIS mark because it does not sell services using the mark or use the mark in any other capacity.  The Panel notes that the WHOIS information indicates that the registrant is “Domain Admin.”  The Panel further notes that the name Domain Admin does not resemble Complainant’s mark, nor is there any other information that indicates Respondent is commonly known by the disputed domain name.  Panels facing similar circumstances have looked at WHOIS and other information to determine that a respondent is or is not commonly known by a disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).  In the instant case the Panel finds that Respondent is not commonly known by the disputed domain name.   

 

Complainant also argues that Respondent uses the disputed <thesis.com> domain name to direct users to Respondent’s website <themeshaper.com>, which offers services that compete with Complainant.  The Panel notes that Complainant has not attached any exhibits showing that <thesis.com> domain name directs users to Respondent’s competing webpage, however, in its Response, Respondent has admitted this use.  The Panel finds that Respondent is using the disputed domain name to redirect internet users to Respondent’s competing webpage, which is not a bona fide offering of goods or service or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii).  See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).

 

The Panel notes as well that if Complainant’s submissions are insufficient it may request additional exhibits or information under Rule 12 of the Rules but given the outcome, the Panel has not elected to seek additional submissions. 

 

The Panel finds that Complainant established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii), which showing is light.  See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name). However, Respondent’s offer draws the Panel’s attention to a troublesome area.  Allegedly, Respondent and Complainant were both approached by a third-party for the possible purchase of the <thesis.com> domain name, and Respondent was the higher bidder, paying $100,000.00 for the domain name. Such a purchase has been considered a bona fide offering of goods under Policy ¶ 4(c)(i) by past panels.  See Electronic Arts Inc. v. Abstract Holdings Internations LTD / Sherene Blackett, FA 1415905 (Nat. Arb. Forum Jan 5, 2012) (“The buying and selling of generic domain names is a bona fide[sic] offering of goods under Policy ¶ 4(c)(i)”).  Therefore, this Panel considers that Respondent’s purchase of the <thesis.com> domain name for $100,000.00 could confer rights sufficient for Policy ¶ 4(c)(i) rights and legitimate interests, had adequate evidence to that effect been adduced. The Panel notes, however, that Respondent did not provide documentary evidence establishing this purchase of the disputed domain name for $100,000.00 and therefore the Panel declines to give that claim full credibility without such proof, which would have been easy for Respondent to provide and which should be Respondent’s burden to provide if the Panel were to rely on that claim as proof of rights.

 

Further, Respondent is purportedly using the disputed domain name in connection with a blogging site as per its Attached Exhibit (<themeshaper.com> home page). Respondent argues that such use serves as an invitation to Internet users to discuss, object, and debate certain topical issues. Panels have found rights and legitimate interests where a respondent was hosting a noncommercial website.  See Baja Marine Corp. v. Wheeler Techs., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001) (finding that the respondent has rights and legitimate interests in the domain name where the respondent made a non-commercial use of the <bajaboats.com> domain name and received no funds from users of the site connected to the domain name).  Yet, here as well, Respondent provides nothing more than the invitation to engage in such activities.  Therefore, the Panel declines to find that Respondent actually operates the <thesis.com> domain name in connection with a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

 

Respondent also argues that the term of the <thesis.com> domain name is common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet.  Contrary to Respondent’s position, the appropriate authority registered THESIS as a mark and Complainant established those legal rights to that mark.  Respondent’s premise is contradicted by this governmental proof of legal rights.

 

The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name and that Respondent has not rebutted that prima facie case. Complainant has therefore satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith:

 

Complainant claims that Respondent’s use of the disputed <thesis.com> domain name is to divert and confuse customers and potential customers.  The Panel notes that Complainant did not include an exhibit showing that <thesis.com> redirects to a webpage owned by Respondent.  The Panel suggests that the submissions might point toward use by Respondent that would support findings of bad faith, pursuant to Policy ¶ 4(b)(iv) if evidence had been adduced to that effect.  However, Complainant failed to bring that proof to the Panel.  See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).

 

The Panel therefore finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

 

A party must satisfy all three of the burdens imposed under the Policy in order for the Panel to order transfer of a domain name from the entity registering it.  Here, Complainant failed to establish that Respondent registered and used the disputed domain name in bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)).  Therefore, the Panel finds that Complainant failed to support its allegations under Policy ¶ 4(a)(iii) and finds for Respondent.

 

The Panel does not adopt Respondent’s contention that the <thesis.com> domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s THESIS mark.  See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

 

The Panel finds that Complainant failed to satisfy ICANN Policy ¶ 4(a)(iii)

 

DECISION

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 <thesis.com> domain name REMAIN WITH RESPONDENT.

 

HON. Richard DiSalle, Hon. Neil Anthony Brown, QC, Hon. Carolyn Marks Johnson

Panelists

Dated: July 3, 2015

 

 

 

 

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