Happy State Bank d/b/a GoldStar Trust Company v. Ronny Yakov / CrowdPay.us, Inc.
Claim Number: FA1808001802648
Complainant is Happy State Bank d/b/a GoldStar Trust Company (“Complainant”), represented by Christian D. Stewart of Burdett Morgan Williamson & Boykin, LLP, Texas, USA. Respondent is Ronny Yakov / CrowdPay.us, Inc (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crowdpay.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Terry F. Peppard, Esq., Honorable John J. Upchurch, (Ret.), as Panelists, and David P. Miranda, Esq., as Chair Panelist.
Complainant submitted a Complaint to the Forum electronically on August 22, 2018; the Forum received payment on August 22, 2018.
On August 23, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <crowdpay.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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 postmaster@crowdpay.us. Also on August 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.
A timely Response was received and determined to be complete on September 12, 2018.
On September 20, 2018, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Terry F. Peppard, Esq., Honorable John J. Upchurch, (Ret.), as Panelists, and David P. Miranda, Esq., as Chair Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns and operates a crowdfunding business in connection to the CROWDPAY mark. Complainant has rights in the CROWDPAY mark through its trademark registrations with the USPTO (e.g., Reg. No. 4,842,747, registered Oct. 27, 2015). See Compl. Ex. A. Respondent’s <crowdpay.us> domain name is confusingly similar to Complainant’s CROWDPAY mark as Respondent fully incorporates the mark with the addition of a “.us” country code top-level domain (“ccTLD”).
Complainant contends Respondent has no rights or legitimate interests in the <crowdpay.us> domain name. Respondent is not licensed or otherwise authorized to use Complainant’s CROWDPAY mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name for a bona fide offering of goods or services.
Respondent registered and uses the <crowdpay.us> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it directly competes with Complainant. Furthermore, Respondent failed to respond to Complainant’s cease and desist letters. Finally, Respondent had constructive notice of Complainant’s rights in the CROWDPAY mark prior to registering the disputed domain name.
B. Respondent
Respondent, CrowdPay.us, Inc., contends it is a crowdfunding platform for raising anywhere from $1 million to $50 million in capital of various types of securities in different types of offerings. Respondent alleges common law rights in its CROWDPAY.US mark. Respondent claims it’s <crowdpay.us> domain name is not identical or confusingly similar to Complainant’s CROWDPAY mark as it adds a “.us” ccTLD to the term “crowdpay,” and such addition avoids any likelihood of confusion.
Respondent claims it has rights and/or legitimate interests in the <crowdpay.us> domain name. Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Further, Respondent claims common law rights in the disputed domain name. Respondent’s <crowdpay.us> domain name was registered on May 12, 2016.
Respondent did not register or use the <crowdpay.us> domain name in bad faith. Respondent does not attempt to disrupt Complainant’s business nor attract, for commercial gain, users to the website by creating a likelihood of confusion. Rather, Respondent’s platforms are “white label,” which are customized and configured for Respondent’s customers and marketed under Respondent’s trademarks. The CROWDPAY mark describes both Complainant’s and Respondent’s distinct products and services. Complainant sought to obtain money from Respondent for an assignment of the CROWDPAY mark, equaling $100,000, and has now filed this proceeding as a result of Respondent’s rejection. Complainant’s delay or laches in bringing this proceeding further demonstrates Respondent’s rights in the CROWDPAY.US mark. Respondent’s failure to respond to Complainant’s cease and desist letters does not constitute bad faith.
Since a determination of ownership of the domain requires a full analysis of the respective trademark rights of the parties, this dispute is outside the scope of the UDRP.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Preliminary Issue: Trademark Dispute Outside the Scope of the UDRP
Complainant claims to have rights in the CROWDPAY mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,842,747, registered Oct. 27, 2015). See Compl. Ex. A. Further, Complainant argues it has used its trademark in connection with its goods and services since January 1, 2015.
Respondent claims to have rights in the “CROWDPAY.US” mark because it has established common law rights in the mark. Further, Respondent has filed an application of its design mark for the CROWDPAY.US mark with the USPTO (87789241, applied Feb. 8, 2018). See Resp. Ex. C.
In sum, Complainant and Respondent both assert rights to the CROWDPAY mark. The Panel determines that this dispute falls outside the scope of the Policy, and therefore chooses to dismiss the Complaint. In Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Forum July 20, 2000), the panel indicated that legitimate disputes should be decided by the courts:
The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the administrative dispute-resolution procedure.
Previous panels have chosen to dismiss UDRP complaints which centered upon trademark disputes. See, e.g., Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”). Therefore, the Panel chooses to dismiss the instant Complaint. The fact that the Panel finds this dispute outside the scope of the UDRP is not a reflection on the merits of Complainant’s contentions.
This dispute being outside the scope of the usTLD Policy, the Panel concludes that Complaint shall be dismissed, without prejudice.
Accordingly, it is Ordered that the <crowdpay.us> domain name shall REMAIN WITH Respondent.
Terry F. Peppard, Esq., Honorable John J. Upchurch, (Ret.), as Panelists,
and David P. Miranda, Esq., as Chair Panelist.
Dated: September 27, 2018
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