DEGANI DESIGNS, LLC v. Chris Morling / Dot Zinc Limited
Claim Number: FA1603001664293
Complainant is DEGANI DESIGNS, LLC (“Complainant”), represented by Marc Blumberg, Texas, USA. Respondent is Chris Morling / Dot Zinc Limited (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chooze.com>, registered with GoDaddy.com, 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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 7, 2016; the Forum received payment on March 7, 2016.
On March 07, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <chooze.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 March 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2016 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 firstname.lastname@example.org. Also on March 8, 2016, 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 March 28, 2016.
On April 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
- Complainant owns a registered trademark with the United States Patent and Trademark Office ("USPTO") for the mark CHOOZE. That mark is used in connection with Complainant's offering of vegan clothing apparel.
- The disputed domain name, <chooze.com>, is identical to the CHOOZE trademark, as it incorporates all of that mark.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no trademarks or service marks that relate to the name. There is no evidence to support the proposition that Respondent is commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the CHOOZE trademark in any manner.
- The disputed domain name was registered and is being used in bad faith. Respondent has held passively the disputed domain name since the date on which Complainant applied for registration of its trademark with the USPTO. When contacted by Complainant regarding purchase of the disputed domain name, Respondent requested payment of $70,000, an amount far in excess of Respondent's out-of-pocket costs associated with the name. Such passive holding of the disputed domain name for five years, and the demand for an exorbitant purchase fee, are conclusive evidence of Respondent' bad faith.
- Respondent registered the disputed domain name, <chooze.com>, for its generic value as an expression of the common word "choose." That registration occurred some ten years before Complainant even applied for registration of its trademark.
- Respondent has legitimate interests in the disputed domain name because of its generic nature.
- Respondent's offer to sell the disputed domain name to Complainant is irrelevant in assessing bad faith as Complainant contacted Respondent first about a possible sale and, in any event, the name is a generic word. Also, Complainant should be barred by the doctrine of laches from sustaining the Complaint as Complainant has waited about fifteen years from registration of the disputed domain name to make this filing.
- Complainant is clearly guilty of reverse domain name hijacking in filing the Complaint with respect to a domain name that is a generic word and whose registration predates Complainant's trademark rights by more than a decade.
In connection with its business, Complainant uses a trademark, CHOOZE, which is registered with, among other authorities, the USPTO (Reg. No. 4,199,032; registered Aug. 28, 2012).
Respondent is the owner of the disputed domain name, <chooze.com>, whose date of creation is August 30, 2001. Respondent is holding the name passively.
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.
Complainant has established its rights in its CHOOZE trademark to the Panel's satisfaction by submission of evidence of registration for the mark with the USPTO. See Space Needle LLC v. Lalji, D2008-1883 (WIPO Feb. 2, 2009) (“The Panel finds that Complainant has established rights in the mark SPACE NEEDLE, by virtue of its registration with the United States Patent and Trademark Office”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) ("Complainant established rights in the PAISLEY PARK mark by registering it with the United States Patent and Trademark Office ('USPTO').").
Since the body of the disputed domain name, <chooze.com>, contains the exact same alphanumeric string as does the CHOOZE mark, the Panel concludes that they are identical for the purposes of the Policy. The addition of the generic top-level domain, ".com," is irrelevant in this consideration. See Abt Electronics, Inc. v. Gregory 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."); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain ('gTLD') '.com' does not serve to adequately distinguish the Domain Name from the mark.”).
Therefore, the Panel rules that Complainant has satisfied the first element required under the Policy.
The Panel elects not to provide an analysis of the second element required under the Policy, because, as explained below, the Panel finds that Complainant has not satisfied the third element.
Respondent registered the disputed domain name in 2001, and Complainant registered its trademark in 2012. In its rather terse Complaint, Complainant furnishes no evidence that it achieved a secondary meaning, or resulting common law rights with respect to its trademark before obtaining registration for that mark. Thus, there is no reason for the Panel to believe that Complainant had acquired any defensible rights in its trademark prior to registration of the disputed domain name. Many UDRP panels have found such circumstances to prohibit any possible finding of bad faith registration of a disputed domain name. The Panel finds itself compelled to adhere to this reasoning, especially since the registration of the disputed domain name in this case precedes the registration of the operative trademark by more than a decade. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (determining 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); see also MediaSpan Group, Inc. v. Rajagopalan, D2005-1282 (WIPO Feb. 20, 2006) ("As a general rule, when a domain name is registered before any trademark rights are established, the registration of the domain name is not in bad faith since the registrant could not have contemplated the complainant’s non-existent right.")
Therefore, the Panel rules that Complainant has not satisfied the third element required under the Policy.
Reverse Domain Name Hijacking
The Panel views this case as a particularly abusive use of the Policy. Before filing a complaint under the Policy, a complainant should undertake at least a cursory review of the circumstances under which it might prevail. Clearly, precedence established under countless previous UDRP rulings suggests that there is no chance to obtain a positive outcome when there is no evidence presented to establish that a complainant has rights in a mark prior to registration of the disputed domain name.. Such is the case with Complainant's filing in this proceeding. See YPlan, Inc. v. KIM, FA 1620559 (Nat. Arb. Forum July 10, 2015) (sustaining a charge of reverse domain name hijacking, and stating, "... the [disputed] domain name was registered in 2001. The earliest date of any registration or use of the mark relied upon in the Complaint was in 2012. In view of this, the registration of the [disputed] domain name could not have been in bad faith on any interpretation of the facts and cases cited in the Complaint."); see also Thiercelin v. CyberDeal, Inc., D2010-0941 (WIPO Aug. 10, 2010) (issuing a finding of reverse domain name hijacking where, "The Complainant knew that the [disputed] Domain Name was registered nearly 10 years before the Complainant acquired his registered rights, no attempt was made to demonstrate the existence of any earlier rights nor was any attempt made to address the issue arising from the disparity in dates.").
Therefore, the Panel finds that Complainant has engaged in an attempt at reverse domain name hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, and the Panel finds that the Complaint was brought in bad faith in an attempt at reverse domain name hijacking.
Accordingly, it is Ordered that the <chooze.com> domain name REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: April 13, 2016
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