Janice G. Montanus v. Douglas Moxley
Claim Number: FA1806001792832
Complainant is Janice G. Montanus (“Complainant”), represented by Thomas J. Fraser of Eavenson, Fraser, Lunsford & Ivan, PLLC, Florida, USA. Respondent is Douglas Moxley (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nutekinternational.com>, registered with Network Solutions, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 20, 2018; the Forum received payment on June 20, 2018.
On June 21, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <nutekinternational.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 July 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 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 July 3, 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 July 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
i) Complainant, Janice G. Montanus, as part of a mutually executed Exclusive Distribution and Licensing Agreement entered into in March 2015, assumed responsibilities for the sales, marketing, and many of the daily operations of a now defunct company known as NuTek International, Inc. Complainant has rights in the NUTEK INTERNATIONAL mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,426,614, registered Mar. 20, 2018). See Amend. Compl. Annex 3. Respondent’s <nutekinternational.com> domain name is identical to Complainant’s NUTEK INTERNATIONAL mark as it incorporates the mark in its entirety.
ii) Respondent has no rights or legitimate interests in the <nutekinternational.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the NUTEK INTERNATIONAL mark in any manner.
iii) Respondent is using the <nutekinternational.com> domain name in bad faith. Respondent disrupts Complainant’s business and its communications with customers.
Respondent failed to submit a Response in this proceeding in time.
1. The disputed domain name <nutekinternational.com> domain name was registered on January 8, 2004.
2. Complainant has established its rights through USPTO registration for the NUTEK INTERNATIONAL mark (e.g. Reg. No. 5,426, 614, registered Mar. 20, 2018).
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.”).
Complainant claims rights in the NUTEK INTERNATIONAL mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its USPTO registration for the NUTEK INTERNATIONAL mark (e.g. Reg. No. 5,426, 614, registered Mar. 20, 2018). See Amend. Compl. Annex 3. Complainant also notes that previous owner of NuTek International never registered the mark so Complainant registered the mark upon acquiring the company. See Amend. Compl. p. 3, ¶ 4. Therefore, the Panel holds that Complainant’s registration of the NUTEK INTERNATIONAL mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <nutekinternational.com> is identical to Complainant’s NUTEK INTERNATIONAL mark as it incorporates the mark in its entirety. Although not mentioned in Complainant’s contentions, a “.com” generic top-level domain (“gTLD”) is also added to the mark. Adding a gTLD to a complainant’s fully incorporated mark fails to sufficiently differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Therefore, the Panel determines the <nutekinternational.com> domain name is identical to the NUTEK INTERNATIONAL mark per Policy ¶ 4(a)(i).
The Panel notes that Respondent’s registration (January 8, 2004) of the <nutekinternational.com> domain name predates Complainant’s first claimed rights in the NUTEK INTERNATIONAL mark (first use on January 1, 2015; filed on July 17, 2017 and registered on March 20, 2018).
The Panel observes a general view of the UDRP panels that although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. See John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, D2001-0074 (WIPO, May 1, 2001) and Digital Vision, Ltd. v. Advanced Chemill Systems, D2001-0827 (WIPO Sep. 23, 2001). See also Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); and Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
Therefore, the Panel determines that Complainant failed to establish Respondent’s registration of the disputed domain name in bad faith and concludes that Respondent did not register the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii), the Panel declines to analyze the other element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (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 Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (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)).
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 <nutekinternational.com> domain name REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: July 31, 2018
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