DECISION

 

Murray R. Braun v. Judd Braun

Claim Number: FA1809001809057

 

PARTIES

Complainant is Murray R. Braun (“Complainant”), represented by John G. Tutunjian of Tutunjian & Bitetto, P.C., New York, USA.  Respondent is Judd Braun (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <rollupawnings.com>, <stockpositioning.com>, and <rollupawning.com>, registered with Godaddy.Com, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 26, 2018; the Forum received payment on September 26, 2018.

 

On September 27, 2018, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <rollupawnings.com>, <stockpositioning.com>, and <rollupawning.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names.  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 October 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@rollupawnings.com, postmaster@stockpositioning.com, postmaster@rollupawning.com.  Also on October 2, 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 October 24, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant engages in a business concerning awnings and awning systems and stock positioning systems. Complainant has rights in the ROLLUP AWNINGS mark through the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,383,609, registered Feb. 12, 2008). See Compl. Ex. B. Complainant also has common law rights in the ROLLUP AWNINGS mark based on his use of the mark in a substantially exclusive, continuous manner since 1998.  Further, Complainant has common law rights in the STOCK POSITIONING SYSTEMS SPS mark dating back to March 1, 2011 through its use of the mark in a substantially exclusive, continuous manner since that date. Complainant filed for registration of the mark with the USPTO (Ser. No. 88,097,513, filed Aug. 29, 2018). See Compl. Ex. F. Respondent’s <rollupawnings.com> and <rollupawning.com> domain names are confusingly similar to Complainant’s ROLLUP AWNINGS mark as one eliminates the letter “s,” while the other is an exact copy of the mark. Respondent’s <stockpositioning.com> domain name is confusingly similar to Complainant’s STOCK POSITIONING SYSTEMS SPS mark as it includes the first two terms of the mark in the domain name.

 

2.    Respondent has no rights or legitimate interests in the <rollupawnings.com>, <stockpositioning.com>, and <rollupawning.com> domain names. Respondent is a former employee of Complainant and worked for Complainant from January 2002 through August 2018. See Braun Dec. ¶ 11. Respondent registered the domain names for Complainant’s use and had permission to register the domain names, however Respondent registered the domain names in his personal name and continues to maintain control of the domain names even after leaving the business. See Braun Dec. ¶¶ 12-13. Further, Respondent requested payment from Complainant for the transfer of the domain names, and threatened to sell the domain names to a third party if Complainant wouldn’t comply. See Braun Dec. ¶ 19.

 

3.    Respondent registered and uses the <rollupawnings.com>, <stockpositioning.com>, and <rollupawning.com> domain names in bad faith. Respondent first attempted to sell the domain names to Complainant, and when Complainant declined, Respondent threatened to sell the domain names to third-parties. See Braun Dec. ¶ 19. Additionally, Respondent is a former employee of Complainant and failed to transfer the domain names to Complainant upon leaving employment with Complainant. Further, Respondent, being a former long-time employee, clearly had knowledge of Complainant’s rights in the mark when it registered the domain names.

 

B.   Respondent:

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <rollupawnings.com>, <stockpositioning.com>, and <rollupawning.com> domain names are confusingly similar to Complainant’s ROLLUP AWNINGS mark.

2.    Respondent does not have any rights or legitimate interests in the <rollupawnings.com>, <stockpositioning.com>, and <rollupawning.com> domain names.

3.    Respondent registered or used the <rollupawnings.com>, <stockpositioning.com>, and <rollupawning.com> domain names in bad faith.

 

DISCUSSION

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 claims rights in the ROLLUP AWNINGS mark through the registration of the mark with the USPTO (e.g. Reg. No. 3,383,609, registered Feb. 12, 2008). See Compl. Ex. B. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the ROLLUP AWNINGS mark for the purposes of Policy ¶ 4(a)(i).

 

Further, Complainant claims common law rights in the STOCK POSITIONING SYSTEMS SPS mark dating back to March 1, 2011 through its use of the mark in a substantially exclusive, continuous manner since that date.  As such, the Panel finds that Complainant does hold common law rights in the STOCK POSITIONING SYSTEMS SPS mark for the purposes of Policy ¶ 4(a)(i).

 

Next, Complainant argues that Respondent’s <rollupawnings.com> and <rollupawning.com> domain names are confusingly similar to Complainant’s ROLLUP AWNINGS mark as one eliminates the letter “s,” while the other is an exact copy of the mark. The Panel also sees that the domain names add the

“.com” generic top-level domain (“gTLD”) and find that similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.  Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel therefore finds that the infringing domain names are identical or confusingly similar to the ROLLUP AWNINGS mark under Policy ¶ 4(a)(i).

 

Lastly, Complainant argues that Respondent’s <stockpositioning.com> domain name is confusingly similar to Complainant’s STOCK POSITIONING SYSTEMS SPS mark as it includes the first two terms of the mark in the domain name. The Panel also sees that the domain name adds the “.com” gTLD and find that eliminating words from a mark and adding a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); see also 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 therefore finds that the infringing domain name is confusingly similar to the STOCK POSITIONING SYSTEMS SPS mark under Policy ¶ 4(a)(i).

 

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”).

 

Complainant claims Respondent has no rights or legitimate interests in the <rollupawnings.com>, <stockpositioning.com>, and <rollupawning.com> domain names as Respondent is a former employee of Complainant. Former employees can be found to lack rights and legitimate interests in domain names under the Policy. See Dominic Vetere v. DAVE CARRIER / DC FINANCE INC, FA 1707259 (Forum Jan. 24, 2017) (holding that “former employees of a company no longer hold any rights or legitimate interests in the company’s mark”); see also Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark). Complainant avers Respondent worked for Complainant from January 2002 through August 2018. See Braun Dec. ¶ 11. Further, Complainant alleges Respondent registered the domain names for Complainant’s use and had permission to register the domain names, however Respondent registered the domain names in his personal name and continues to maintain control of the domain names even after leaving the business. See Braun Dec. ¶¶ 12-13. Accordingly, the Panel agrees with Complainant’s assertions and holds that Respondent’s former employment with Complainant indicates Respondent’s lack of rights and legitimate interests in the domain names.

 

Further, Complainant claims Respondent requested payment from Complainant for the transfer of the domain names, and threatened to sell the domain names to a third party if Complainant wouldn’t comply. Offering a confusingly similar domain name for sale can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant provides a sworn statement from Complainant’s owner which alleges this information. See Braun Dec. ¶ 19. The Panel therefore agrees and finds that Respondent’s willingness to sell the domain names demonstrates its lack of rights and legitimate interests under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant claims that Respondent first attempted to sell the domain names to Complainant, and when Complainant declined, Respondent threatened to sell the domain names to third-parties. Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant provides a sworn statement from Complainant’s owner which alleges this information. See Braun Dec. ¶ 19. Accordingly, the Panel uses Respondent’s offering of the domain name for sale to the general public as evidence of bad faith registration.

 

Further, Complainant claims that Respondent is a former employee of Complainant, and thus had actual knowledge of Complainant’s rights in the ROLLUP AWNINGS and STOCK POSITIONING SYSTEMS SPS marks at the time of registering the <rollupawnings.com>, <stockpositioning.com>, and <rollupawning.com> domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See DINOFLEX Mfg. Ltd. v. Recreational Tech. Indus. Ltd., FA 292846 (Forum Aug. 17, 2004) (“The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith since Respondent wilfully registered the name despite its knowledge of Complainant’s rights in the PLAYTILES mark, which can be inferred from the involvement of Mr. Damberg in the industry and as a past or current employee of Complainant and Respondent respectively.”). Accordingly, the Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <rollupawnings.com>, <stockpositioning.com>, and <rollupawning.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  November 6, 2018