Strategy11 v. JIM ONTIVEROS / FIRESTORMGENERALCONTRACTORS,INC.
Claim Number: FA1610001696429
Complainant is Strategy11 (“Complainant”), Utah, USA. Respondent is JIM ONTIVEROS / FIRESTORMGENERALCONTRACTORS,INC. (“Respondent”), Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <formidableforms.com>, registered with Wild West Domains, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 3, 2016; the Forum received payment on October 3, 2016.
On October 4, 2016, Wild West Domains, LLC confirmed by e-mail to the Forum that the <formidableforms.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 October 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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 postmaster@formidableforms.com. Also on October 4, 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.
Having received no response before the expiration of the Response period from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(b)(viii).
Formidable Forms, word mark “Formidable Forms” US Serial number 86580885. US Registration number 4850563 IC 009. US 021 023 026 036 038. Goods & Services: Downloadable software for use in the design, creation, and management of website content. FIRST USE: 20091201. FIRST USE IN COMMERCE: 20091201
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[All three elements of the Policy must be alleged and proved by the Complainant. UDRP Para. 4(a).] [The analysis in this section may require more space than provided, but the entire Complaint shall not exceed fifteen (15) pages. FORUM Supp. Rule 4(a).]
[a.] Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
The domain name <formidableforms.com> is identical to the trademark Formidable Forms, to which Complainant has rights. The mark has been registered with the U.S. Patent and Trademark Office, and United States Registration No. 86580885 has been issued for the mark.
The addition of the generic top-level domain name (.com) to this registered mark (Formidable Forms) does not create a new, separate, distinct mark that can overcome Complainant’s claim of identical mark.
The domain <formidableforms.com> is identical to the trade mark Formidable Forms, which refers to the product of the same name, Formidable Forms. Formidable Forms is a downloadable software product for the use of website form creation. It is reasonable that customers and prospective customers interested in finding the brand and product Formidable Forms would travel to <formidableforms.com>. It is confusing to customers and prospective customers that upon arriving at <formidableforms.com>, the product and brand of the same name cannot be found.
[b.] Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(c).
Respondent should be considered as having no legitimate interests in respect to this domain because Respondent is not currently offering a form-building product or operating a business under the name “Formidable Forms”. In fact, Respondent’s business appears to be a general contractor business “Firestormgeneralcontractors, Inc”, which is not apparently associated with a software or form-building product.
Respondent has not had an offering on the website with the domain <formidableforms.com> since purchase of the domain in 2010.
Respondent has never been a part or had a part of Strategy11, the company that owns the trademark for Formidable Forms. Respondent is in no way affiliated with the company Strategy11.
On June 1, 2015, Complainant contacted Respondent about a possible purchase of domain name. Respondent replied with a question about the market value of Complainant’s company and subsequently replied (June 2, 2015) that Respondent was interested in “participating in [Complainant’s] company’s future.”
It appears Respondent purchased the domain <formidableforms.com> without a marketable product or service to be marketed at <formidableforms.com> and simply wants to leverage the domain so he can participate on his terms in the “future” of Formidable Forms.
[c.] Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).
<Formidableforms.com> was registered April 28, 2010, four months after the trademark Formidable Forms was first used in commerce (December 1, 2009). Despite having had the domain registered for six years, Respondent has yet to enter the market with a product or offering for <formidableforms.com>. Respondent has never had a live website operating at <formidableforms.com> and users who travel to <formidableforms.com> find only a message that says: “This website is temporarily unavailable, please try again later.”
The Uniform Domain Name Dispute Resolution Policy 4(b)(i), states that the following circumstance shall be evidence of the registration and use of a domain name in bad faith:
“circumstances indicating that you have registered or you have 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 your documented out- of-pocket costs directly related to the domain name”
On June 2, 2015, Respondent emailed the following to Complainant:
“Steve,
The reason for the valuation question is that I am interested in participating in your company's future. I created Formidable Forms prior to 2010 and registered the domain name in 2010. As I mentioned when we spoke, our goal is to create forms for several industries and allow customers to modify them. We also plan to launch a legal document forms division. With that said, we would be willing to form a joint partnership and allow you to use the Formidableforms.com domain. We would need to reach an agreement on the specifics. My first thought is to have a redirect option to your website from our website. Until we are fully ready to launch, we could forward our domain to your website seamlessly. If this sounds agreeable, we would need to further agree on the specifics and sign written contracts. Alternatively, we might be willing to lease you Formidiableforms.com [sic] for $1000.00 per year or sale [sic] it for $50,000. I would also be interested in given [sic] you the domain name in exchange for an equity stake in your company. Again, the specifics would need to be agreed to and a written contract signed.
Cordially,
J.D. Ontiveros
President/CEO
FIRESTORM GENERAL CONTRACTORS, INC. JDVB, INC.”
Despite Respondent’s mention of having the goal to create a forms product and a plan to launch a forms division, Respondent’s naming a price of $50,000 for the domain appears to reveal his intention to net from the legitimate Formidable Forms trademark owner money well in excess of market value and out of pocket costs for the domain.
In further email correspondence, Respondent declines a good faith offer of $1,000 for the domain, which would be a fair consideration for out-of-pocket costs directly related to the domain name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. Respondent made several claims in a series of emails, but failed to make them under oath and failed to make them formal. The emails said:
On October 28, 2016 at 6:19 am, Respondent emailed “Regarding a written notice of complaint that I received on 10/26/16. The complaint concerns formidable forms.com: case FA1610001696429.
First and foremost, we request an extension to respond properly. Our email address has changed since 2010. It now is JD@FIRESTORMRESTORATIONS.COM. We received the aforementioned notice after the deadline to respond.
As a preliminary response, the complaint has tried for years to purchase our domain name. When we refused to sell it, he filed a fraudulent US copyright application. WE CAN PROVE THIS GIVEN THE EXTENSION OF TIME THAT WE ARE REQUESTING. As a supplement to this response, we will forward our email communication concerning this matter.
In summary, we request an extension to fully and properly respond.”
On October 28, 2016 at 6:39 am, Respondent further emailed “As you can see by the forwarded email, Steve is making an offer to buy our domain name. If he truly started his company in February 2010, he could have registered formidableforms.com. The truth is simple, we clearly establish the use and ownership of the name in 2010. Steve is attempting to perpetrate a fraud by falsely stating the date he first used the name. Further, he falsified his application to the U.S. patent office.”
On October 28, 2016 at 7:00 am, Respondent further emailed “Attached you will find further data concerning this matter. This data confirms that the complainant knew our correct email address: but purposely failed to give us notice concerning this matter. The email states that Steve first used the formidableforms name one month before we registered it. We submit that he researched the date that we registered formidableforms.com and is now attempting to state that he first used it one month prior to us registering it. I trust that you can clearly see that we are the rightful owners of the domain name. Further, we stipulate that we first started using the formidable forms name approximately two years before we registered it.”
There was no further correspondence. Respondent failed to pay the required fee to request an extension of time.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 claims rights in the FORMIDABLE FORMS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,850,563, registered on November 10, 2015) for use with downloadable software to create forms for websites. USPTO registrations are considered prima facie evidence of complainants’ rights in their asserted marks. See Intel Corp. v. Macare, FA 660685 (Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO) see Men’s Wearhouse, Inc. v. Wick, FA 117861 (Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); and see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive and that Respondent has the burden of refuting this assumption). While Respondent claims in correspondence Complainant falsified its application to the USPTO, that is not for this Panel to decide. If Respondent was serious about this claim, one would think Respondent would be serious enough to make this claim in a formal answer where the Panel would have some facts before it. Even then, no Panel would lightly overturn a decision by a governmental trademark authority. For unknown reasons, Respondent failed to file a formal answer. This Panel must conclude Complainant has rights in the FORMIDABLE FORMS mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant claims Respondent’s <formidableforms.com> domain name is identical to the FORMIDABLE FORMS mark because it contains the mark along with the gTLD “.com.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See EarLens Corporation v. Lisa Katz / Domain Protection LLC, FA 1643578 (Forum Nov. 28, 2015) (holding that the addition of the gTLD “.com” to a complainant’s mark is irrelevant to a Policy ¶4(a)(i) analysis); see also ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”). Likewise, the lack of a space is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits spaces. See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (holding that the <rackspace.xyz> domain name is identical to the complainant’s RACKSPACE mark, because, “the addition of a generic top-level domain is seen as trivial and non-distinctive for the purposes of this comparison does not lessen in any way the confusing similarity between the disputed domain name and Complainant’s mark.”) and see Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”). Respondent’s domain name is identical to Complainant’s mark, so the Panel need not consider the issue of “confusing similarity” because Respondent domain name is identical to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 claims Respondent lacks rights or legitimate interests in the <formidableforms.com> domain name because Respondent’s apparent business name is “Firestormgeneralcontractors, Inc,” and Respondent is not affiliated with Complainant. The WHOIS records indicate “JIM ONTIVEROS / FIRESTORMGENERALCONTRACTORS,INC.” as the domain name Registrant. There is no obvious connection between Respondent’s name and the disputed domain name. Respondent has not provided any evidence to the contrary. Given the lack of evidence in the record, this Panel will find Respondent is NOT commonly known by the <formidableforms.com> domain name under Policy ¶4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant claims Respondent lacks rights or legitimate interests in the <formidableforms.com> domain name because Respondent has not used the domain name since acquiring it in 2010. Certainly there is no web site at the domain. There is no evidence of any other use, such as a domain name for email. Respondent appears to have tried to sell the domain name for the proverbial “piece” of Complainant’s company. Failing that, the price was $50,000 or a yearly rental fee. Based upon this uncontroverted evidence, Respondent does not use the <formidableforms.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii). This means Respondent lacks rights or legitimate interests in the domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“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).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent failed to file a formal response in this case. This Proceeding was deemed commenced on October 4, 2016. The due date for a response was October 24, 2016. On October 28, 2106, Respondent requested an extension of time to respond (but not for a specific period). Forum Rule 5 requires requests to extend the time period to file a response can be extended but only by 4 days. By the time Respondent made the request, the possible four day extension period had pretty much expired. Respondent claimed it had not gotten the Complaint in a timely manner because it was emailed to the wrong email address. While this might be true, Respondent listed this email address in the domain name’s WHOIS information. It is Respondent’s obligation to keep its email addresses current. If Respondent did not, Respondent can hardly claim that is Complainant’s fault. It should also be noted Respondent did not submit a proposed Response with its request for an extension of time. Once again, this Panel wonders why Respondent acted this way. If Respondent had a serious defense, this Panel assumes Respondent would have presented it to the Panel as soon as possible.
Complainant claims Respondent use of the <formidableforms.com> domain name is in bad faith according to Policy ¶4(b)(i) because Respondent responded to Complainant’s offer to purchase the domain name with a counter-offer of $50,000 (or a “participation” in Complainant’s venture). Complainant has provided e-mail correspondence to substantiate this claim. Respondent also refuses sale for $1,000, which Complainant maintains would be a fair consideration for out-of-pocket costs of Respondent. Respondent did not use the disputed domain name since April 2010. Why did Respondent purchase a domain name it hasn’t used in more than six years? The obvious answer is Respondent purchased the domain name intending to sell it to Complainant (or someone in Complainant’s position). Even though Complainant initiated this discussion (and Respondent is more than entitled to sell a domain name it purchased for other purposes), it appears to this Panel Respondent purchased the domain name primarily for the purposes of selling it to Complainant. This constitutes bad faith registration and use under Policy ¶4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network, FA1405001557092 (Forum June 26, 2014) (finding that the respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(i) because it countered Complainant’s offer to buy the disputed domain name with an offer to sell the disputed domain name of $100,000).
Complainant claims Respondent uses the <formidableforms.com> domain name in bad faith because it resolves to an inactive website and the domain name is not otherwise used. This Panel agrees Respondent registered and uses the <formidableforms.com> domain name in bad faith for this reason. See Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <formidableforms.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, November 7, 2016
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