T & P Holding Company, LLC v. Wendy Webbe and Ancient Holdings, LLC
Claim Number: FA1802001773041
Complainant is T & P Holding Company, LLC (“Complainant”), represented by Michael A. Johnson of Kay Griffin, PLLC, Tennessee, USA. Respondent is Wendy Webbe / Ancient Holdings, LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youareok.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 22, 2018; the Forum received payment on February 22, 2018.
On February 23, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <youareok.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 February 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2018 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 February 26, 2018, 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 March 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
1. Complainant, T & P Holding Company, LLC, has been using its YOU ARE OK mark in commerce since 2010, in connection with retail services, clothing, hair salon services, and other aesthetic goods/services. See Compl. Ex. 2. Respondent has common law rights in the mark based on this use. Respondent’s <youareok.com> domain name at issue is identical to Complainant’s YOU ARE OK mark.
2. Respondent has no rights or legitimate interests in the domain name at issue. Respondent has never used the YOU ARE OK mark in connection with any goods or services. Rather, Respondent’s previous use of the <youareok.com> domain name redirected to another website offering the domain name for sale. Further, the undersigned counsel made an offer using the online form and received an automated message that the offer was too low. Now, the domain name at issue merely displays the message “website coming soon! Please check back soon to see if the site is available.” See Compl. Ex. 4.
3. Respondent’s registration and use of the domain name is in bad faith as Respondent has a pattern of registering domain names in bad faith. Additionally, Respondent’s registration and use is in bad faith because there is no content on the disputed domain name.
1. Respondent did not submit a Response
1. Respondent’s <youareok.com> domain name is confusingly similar to Complainant’s YOU ARE OK mark.
2. Respondent does not have any rights or legitimate interests in the <youareok.com> domain name.
3. Respondent registered or used the <youareok.com> domain name 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 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(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.”).
Identical and/or Confusingly Similar
Complainant’s claims rights in the YOU ARE OK mark are based in common law for the purposes of Policy ¶ 4(a)(i). Complainant claims common law rights in the mark dating back to the first use of the mark in commerce in 2010. Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Traditionally, a secondary meaning is also established by evidence of a complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to the complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant provides screenshots of its website and social media posts indicating it uses the mark. See Compl. Ex. 2. Complainant does not provide other evidence to support its claim of common law rights. The Panel finds Complainant’s contentions to be sufficient, and concludes that Complainant has established common law rights per Policy ¶ 4(a)(i) by showing the YOU ARE OK mark has taken on a secondary meaning in association with Complainant’s business.
Complainant argues Respondent’s <youareok.com> domain name is identical to its YOU ARE OK mark. Respondents who merely incorporate a complainant’s mark entirely into a domain name do not usually distinguish the two for purposes of Policy ¶ 4(a)(i). See Cards Against Humanity, LLC v. sri winarti, FA 1736823 (Forum July 31, 2017) (“The Panel therefore finds Respondent’s <cardsagainsthumanity.us> to be identical to Complainant’s CARDS AGAINST HUMANITY mark.”). The Panel notes that the domain name does not include the spacing in the mark, and includes the “.com” generic top-level domain (“gTLD”). Such changes are irrelevant in a Policy ¶ 4(a)(i) analysis. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (“Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Accordingly, the Panel finds Respondent’s domain name is identical to Complainant’s mark.
Rights 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Although Complainant makes no argument under Policy ¶ 4(c)(ii), the Panel notes the WHOIS information does not reflect that the Respondent is commonly known by the domain name at issue. Panels have found, absent a response, the WHOIS information of record may demonstrate said respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record names the registrant of the domain name as “Wendy Webbe / Ancient Holdings, LLC.” Accordingly, the Panel finds Respondent is not commonly known by the disputed domain name.
Complainant contends Respondent does not use the <youareok.com> domain name in connection with a bona fide offering of goods or services, or legitimate noncommercial or fair use, as Respondent is not making an active use of the name. Panels have found where a domain name has no content, or is being offered for sale, then the respondent has no legitimate rights or interests under Policy ¶¶ 4(c)(i) and (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Here, Complainant indicates Respondent’s previous use of the domain name at issue redirected to a website offering the domain name for sale. The Panel notes there is no evidence in the record to support this assertion. Furthermore, Complainant specifies Respondent’s current use of the disputed domain name is to resolve to a page displaying “website coming soon! Please check back soon to see if the site is available.” See Compl. Ex. 4. Consequently, the Panel finds Respondent’s prior offer to sell the domain name, and/or current inactive holding of the name are not in accordance with Policy ¶¶ 4(c)(i) and (iii).
Registration and Use in Bad Faith
Per Policy ¶ 4(b)(ii), Complainant asserts Respondent’s registration and use of the <youareok.com> domain name are part of a bad faith pattern of registrations targeting famous marks. Panels have found where a respondent’s prior UDRP proceedings resulting in transfers can indicate a pattern of bad faith registration per Policy ¶ 4(b)(ii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“Complainant has provided evidence that Respondent has a history of UDRP and USDRP decisions decided against it. This establishes bad faith within the meaning of Policy ¶ 4(b)(ii).”). Here Complainant provides a list of prior UDRP cases decided against Respondent. See Compl., at 2–3. Accordingly, the Panel finds Respondent has engaged in a pattern of bad faith registration under Policy ¶ 4(b)(ii), and that the <youareok.com> domain name is part of that pattern and thus registered and/or used in bad faith.
Per Policy ¶ 4(a)(iii), Complainant argues Respondent’s failure to make an active use of the <youareok.com> domain name indicates it was registered in bad faith. Respondents who make no active use of a domain name have been found to have registered and used said domain name in bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). Here, Complainant avers Respondent’s domain name resolves only to an “under construction” page. See Compl. Ex. 4. Consequently, the Panel finds Respondent’s inactive holding of the domain name is in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youareok.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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