Geo Global Partners, LLC v. Ruby Administrator / Ruby Advertising
Claim Number: FA1807001797850
Complainant is Geo Global Partners, LLC (“Complainant”), represented by Sung Joo of Lucas & Mercanti, LLP, New York, USA. Respondent is Ruby Administrator / Ruby Advertising (“Respondent”), Kenya.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gardenique.com>, registered with Tucows Domains Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2018; the Forum received payment on July 20, 2018.
On July 23, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <gardenique.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 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 July 23, 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 August 15, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
Complainant, Geo Global Partners, LLC, designs, manufactures and markets products in the water garden, lake management and garden décor categories. Complainant has rights in the GARDENIQUE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,551,771, registered Dec. 23, 2008). Complainant also argues common law rights. Respondent’s <gardenique.com> domain name is identical to Complainant’s mark as Respondent incorporates the entire GARDENIQUE mark, merely adding the “.com” generic top-level domain (“gTLD”).
Respondent does not have any rights or legitimate interests in the <gardenique.com> domain name. Respondent is not permitted or licensed to use Complainant’s GARDENIQUE mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <gardenique.com> domain name to host pay-per-click links to third party websites. In addition, Respondent fails to make active use of the disputed domain name. Finally, Respondent has offered the disputed domain name for sale to Complainant and the general public for an amount in excess of its out-of-pocket costs.
Respondent has registered and used the <gardenique.com> domain name in bad faith. Respondent attempts to the sell the disputed domain name for an amount in excess of out-of-pocket expenses. In addition, Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name which features click-through advertisements to third party websites that compete with Complainant. Finally, Respondent had actual knowledge of Complainant’s mark when it renewed the registration for the disputed domain name.
Respondent failed to submit a Response in this proceeding.
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 GARDENIQUE mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registration for the GARDENIQUE mark (e.g., Reg. No. 3,551,771, registered Dec. 23, 2008). The Panel here finds that Complainant has rights in the GARDENIQUE mark per Policy ¶ 4(a)(i).
Complainant claims to have “also been using the mark GARDENIQUE in commerce on home décor and garden products for more than 10 years.” Complainant then states that many products bearing the mark are marketed and available for purchase throughout the USA both online and offline. Without expressly stating such, it appears that Complainant is attempting a claim of common law rights in the mark, however there are no specifics regarding dates of usage. There are no calendar dates mentioned in regards to the “more than 10 years” assertion. Complainant also states it “has expended tremendous time, money and resources” to build goodwill in its industry. The Panel notes that common law rights are typically found through a sufficient showing of secondary meaning under Policy ¶ 4(a)(i). 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.’”); see also 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 claims the GARDENIQUE mark has become known in the U.S. as Complainant’s exclusive mark in the gardening and home décor industry and enjoys a reputation for high quality goods in the same. Complainant also provides screenshots of its <gardeniquedecor.com> domain name which uses the GARDENIQUE mark in connection to Complainant’s goods and services. Despite its assertions and photos, Complainant’s evidence is lacking in all the necessary details. There is nothing in the record to indicate continuous use of the mark beginning on any date certain. There are no figures indicating any amounts expended relative to advertising or sales. Nor are any proofs tendered to show the public’s association of the mark with Complainant predates 2004. Complainant states…”Geo Global’s rights to this trademark arose when the application was filed with the USPTO in 2004.” The Panel finds that Complainant has proven NO common law rights. The Panel again notes the disputed domain name was registered on or about June 7, 1996.
Next, Complainant asserts that the <gardenique.com> domain name is identical to the GARDENIQUE mark as Respondent incorporates the mark in its entirety and adds the “.com” gTLD. Additions of a gTLD to a complainant’s mark is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel notes that registration of a domain name is not analogous to registration of a trademark, and further that registration of a mark with the USPTO is presumed valid, and Respondent has raised no challenges to validity. The Panel here finds that Respondent’s <gardenique.com> domain name is identical to Complainant’s GARDENIQUE mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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 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). Complainant here has NOT set forth the requisite prima facie case.
As noted above, Complainant failed to prove the existence of any common law rights in its mark. Complainant expressly states that rights to its mark arose in 2004. Respondent registered the disputed domain name in 1996, predating the trademark registration by nearly a decade. Although Respondent failed to file an answer, Complainant’s pleadings note the extensive usage of the disputed domain name by Respondent, which controvert Complainant’s statements that Respondent’s use is inactive, or that the domain name resolves to an inactive website. Because Complainant fails to specifically address Respondent’s usage prior to Complainant’s earliest proof of rights in its trademark, Complainant has not shown that Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has NOT proven this element.
The Panel notes that since Respondent’s registration of the <gardenique.com> domain name predates Complainant’s first claimed rights in the GARDENIQUE mark, and Complainant does not address that fact, Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See 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.”); see also 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.”).
The Complainant has NOT proven this element.
As the Complainant has NOT established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall NOT be GRANTED.
Accordingly, it is Ordered that the <gardenique.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: August 29, 2018
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