Walker Edison Furniture Company LLC v. Manor Park (Guernsey) Ltd
Claim Number: FA1804001784458
Complainant is Walker Edison Furniture Company LLC (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is Manor Park (Guernsey) Ltd (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <manorpark.com>, registered with Mesh Digital Limited.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2018; the Forum received payment on April 30, 2018.
On May 3, 2018, Mesh Digital Limited confirmed by e-mail to the Forum that the <manorpark.com> domain name is registered with Mesh Digital Limited and that Respondent is the current registrant of the name. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital Limited 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 May 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 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 email@example.com. Also on May 8, 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.
A timely Response was received and determined to be complete on June 1, 2018.
At timely Additional Submission from Complainant was received and determined to be complete on June 6, 2018.
On June 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 is an innovative home décor and ready-to-assemble furniture manufacturer. Complainant has rights in the MANOR PARK mark through its pending United States Patent and Trademark Office (“USPTO”) application (e.g., Ser. No. 87,804,249, filed Feb. 20, 2018) and common law rights in the mark. Respondent’s <manorpark.com> domain name is confusingly similar and/or identical to Complainant’s MANOR PARK mark as Respondent incorporates the mark in its entirety and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <manorpark.com> domain name. Respondent is not licensed or otherwise authorized to use Complainant’s MANOR PARK mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to an inactive website.
Respondent registered and is using the <manorpark.com> domain name in bad faith. Respondent disrupts Complainant’s business and diverts users to the disputed domain name. Respondent’s revision of the WHOIS information of the disputed domain name is evidence of bad faith. Furthermore, Respondent fails to make active use of the disputed domain name.
Respondent is in the web design and IT support business that benefits the Manor Park Guaranteed Investment Funds Limited (“the Fund”), a third-party, investment fund. Complainant cannot establish rights in the MANOR PARK mark as its USPTO application is insufficient and the mark is a geographic location. Complainant also fails to provide any evidence to support it has common law rights in the mark.
Respondent has rights and legitimate interests in the <manorpark.com> domain name. Respondent is commonly known by the disputed domain name as it uses the disputed domain name and associated email address for the Fund. Additionally, Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. In fact, Respondent has used the disputed domain name to provide a website and email address for fund managers of the Fund.
Respondent did not register or use the <manorpark.com> domain name in bad faith. Respondent does not divert or disrupt Complainant’s business as Respondent does not compete with Complainant. Instead, Respondent provides investment services rather than selling home décor and furniture. Complainant also tried to purchase the disputed domain name from Respondent. Additionally, the change in the WHOIS is not an indicator of bad faith, but rather Respondent attempted to comply with ICANN rules, but a “user error” prevented Respondent from completing the update. Furthermore, Respondent has made active use of the disputed domain name in connection to an investment fund for nearly eighteen (18) years.
The Panel notes that the <manorpark.com> domain name was registered on May 18, 2000.
C. Additional Submissions
In its additional Submission, Complainant indicates that it is selling its MANOR PARK product line on <hayneedle.com> and <walmart.com>
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 claims to have rights in the MANOR PARK mark through its USPTO intent-to-use application. Filing an application with the USPTO does not automatically confer rights in a mark under Policy ¶ 4(a)(i). See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”). The Panel finds Complainant cannot establish rights in the MANOR PARK mark through its intent-to-use USPTO application per Policy
Next, Complainant asserts it has established common law rights in the MANOR PARK mark by virtue of its use in commerce. Establishing common law rights in a mark requires a showing of secondary meaning of the mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Lack of evidence to support secondary meaning may result in failure to establish common law rights in a mark. See CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) (finding Complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant.”). Complainant does not provide any evidence to supports its contention that it has common law rights in the MANOR PARK mark other than current use on <hayneedle.com> and <walmart.com>. The trademark application is based on intent-to-use, not actual use. No historic sales or advertising figures are supplied or other evidence provided establishing public association with this mark. Therefore, the Panel finds that Complainant has failed to establish common law rights in the mark per Policy ¶ 4(a)(i).
As the Panel has concluded that Complainant has not satisfied Policy ¶ 4(a)(i) because it has not established rights in the MANOR PARK mark, the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (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); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Mere lack of success of the Complainant is not itself sufficient to demonstrate that the Complainant was brought in bad faith. See, e.g., Proto Software, Inc. v. Verified Axis, Inc. / PROTO.COM, D2006-0905 (WIPO Oct. 10, 2006). However, such a finding may be appropriate where, as here, the disputed domain name registration long predates Complainant’s claimed trademark rights. Id. Specifically, Complainant’s intent to use application was filed on February 20, 2018, whereas Respondent registered the domain name 18 years previously on May 18, 2000. Further, the Panel has found that Complainant has failed to establish any trademark rights in this term.
Thus, Complainant must have been aware, at the time the Complainant was filed, that there was no valid trademark usage by Complainant predating Respondent’s May 18, 2000 registration of the domain name. “Proceedings must not be commenced in a brash and totally unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name that considerably predated any trademark held by the Complainant”. Id. It follows that this Complaint was brought in bad faith and that, accordingly, Complainant has attempted to engage in Reverse Domain Name Hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <manorpark.com> domain REMAIN WITH Respondent.
The Panel also declares, on the issues of reverse domain name hijacking, that the Complaint has been brought in bad faith and as such is an abuse of the Policy.
David A. Einhorn, Panelist
Dated: June 15, 2018
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