Tracy Hollander v. Tech Support
Claim Number: FA1810001809934
Complainant is Tracy Hollander (“Complainant”), represented by Brian M. Taillon of McHale & Slavin, P.A., Florida, USA. Respondent is Tech Support (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bbqdepot.com>, registered with GoDaddy.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 1, 2018; the Forum received payment on October 1, 2018.
On October 1, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bbqdepot.com> 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 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@bbqdepot.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 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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.
A. Complainant
Complainant, Tracy Hollander, owns THE BBQ DEPOT trademark and uses the mark in connection with online retail store services in the United States featuring gas, charcoal, and electric grills, grill islands, grill parts and accessories as well as gas burners, stoves, deep fryers, and smokers. Complainant has rights in THE BBQ DEPOT mark based upon its longstanding use in commerce as well as its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <bbqdepot.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the mark in the disputed domain with the only difference being the omission of the word “the.”
Respondent lacks rights and legitimate interests in the <bbqdepot.com> domain name because Respondent is not authorized to use Complainant’s mark in relation to any domain name registration. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant and offers online retail store services in the United States that are similar to those offered by Complainant.
Respondent registered and uses the <bbqdepot.com> domain name in bad faith. The domain name was created in 2003 but Respondent acquired it some time later. Respondent attempts to commercially gain via competition with Complainant’s business by offering the same retail store services as Complainant under a confusingly similar domain name. Furthermore, Respondent renewed the disputed domain name despite having notice of Complainant’s superior rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) no finding is made regarding the Respondent’s rights or legitimate interests in the disputed domain name; and
(3) there is insufficient evidence upon which to determine whether the disputed domain name was registered and is being used by Respondent in bad faith
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 asserts rights in THE BBQ DEPOT mark based upon its registration of the mark with the USPTO and it provides a copy of such registration. Registration of a mark with the USPTO is sufficient to establish complainant’s rights in the mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel concludes that Complainant has rights in the mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <bbqdepot.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the mark in the disputed domain name except for one word. Omitting a single, non-distinctive word such as “the”, from a mark in a disputed domain name may not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD). Here, Respondent includes THE BBQ DEPOT mark in the disputed domain name merely omitting the first, non-distinctive, term “the.” Accordingly, under a Policy ¶ 4(a)(i) threshold analysis the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s mark.
As this case turns upon the question of whether the Respondent registered and used the disputed domain name in bad faith, the Panel declines to make any findings under Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and uses the <bbqdepot.com> domain name in bad faith because Respondent attempts to commercially gain by offering competing goods and services under such name which is confusingly similar to the Complainant’s mark.
A preliminary question in this case is whether the Complainant owned rights to it’s THE BBQ DEPOT mark prior to the date on which the Respondent acquired the <bbqdepot.com> domain name. It is noted that the trademark registration submitted into evidence by Complainant was filed on March 9, 2016 and issued to registration on November 1, 2016. This registration recites June 1, 2003 as the date of first use of the mark in commerce, although Complainant submits an archival image of its website from August 23, 2000 in which the mark is seen. Further, Complainant’s current website contains the statement “Since 1956, The BBQ Depot has been helping you have the ultimate grilling experience”. As for the <bbqdepot.com> domain name, it was first created on September 25, 2003. Accepting Complainant’s evidence on its face and assuming, solely for purposes of this preliminary question, that Respondent is the original owner of the domain name, the facts of this case indicate that Complainant did, in fact, own trademark rights at least a few months prior to the creation of the disputed domain name.
Next, the Panel turns its attention to the question of whether Respondent’s registration and use of the disputed domain name meets the bad faith standards set out in Policy ¶ 4(a)(iii) and ¶ 4(b). It is well settled that, for determining the date upon which to consider bad faith registration, Panels generally look to the date on which the Respondent acquired the domain name rather than only to the domain’s initial date of creation. See, DIRECTV, Inc. v. Toshi Amori, FA 1394254 (Forum July 28, 2011) (“The operative date is the date when Respondent acquired the disputed domain name (assuming the Respondent is not a successor in interest to the previous domain name owner).”); Celilo Group Media, Inc. v. Domain Administrator, D2010-1119 (WIPO August 19, 2010) (“there has been a change of control amounting to a new registration for the purposes of this [bad faith] element of the Policy. What is significant is that the Domain Name was acquired on a date post-dating the coming into existence of the Complainant’s unregistered trade mark rights….”) In the present case, Complainant submits no definitive evidence of the date on which the Respondent acquired the <bbqdepot.com> domain name. It does, however, submit some circumstantial evidence such as search results from the Archive.org website which show no website screen captures for the disputed domain name from 2004 - 2012, and evidence that the domain appears to have been parked from 2013 - 2015. It also submits evidence that Respondent first incorporated itself in the State of Utah on March 22, 2017. In an effort to bring further clarity to this case, the Panel independently reviewed archived Whois records for the <bbqdepot.com> domain name and found that the named registrant for the domain has changed a number of times since its creation in 2003. This archival record also indicates a possibility that the domain name was acquired by the Respondent on March 21, 2016 but it is not possible to determine this with certainty due to the use of a Whois privacy service.
In light of the facts available in this case, it is not possible to say, with certainty, when the <bbqdepot.com> domain name was actually acquired by the Respondent or when its current use of offering BBQ related products commenced. This is quite critical, however, as both parties are based in the United States and so the law of that country relating to unregistered (also called “common law”) trademark rights is applicable to this dispute. In the United States common law trademark rights are viewed as being limited to the scope of the mark’s reputation and this can often take the form of a geographic limitation. See, e.g., Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 415-16 (1916). For example, if party A operates a shop only in the eastern part of the country but party B operates a shop offering similar goods and using a similar trademark only in the western part of the country, if their respective customer bases and brand reputations don’t overlap, it may be possible for both to coexist and each obtain a certain measure of common law trademark rights within the geographic scope of their respective businesses. Further, the mere existence of a website for the business does not automatically confer trademark rights throughout the territory in which that website is accessible by potential customers. See, 5 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 26:30.50 (4th Ed. 2000) (“[k]nowledge among persons in the territories in issue must be proven by evidence, not assumed just because the Internet is national and global,” Just “because a Web site featuring a trademark can theoretically be accessed on computers from Florida to Alaska … does not mean that the trademark is known and established in those locations.”)
Here, although Complainant has not submitted into evidence an image of its current thebbqdepot.com website resolution, the Panel’s independent review of the live site reveals that it mentions a physical location for a store and showroom in the city of Hollywood, Florida. The site also appears to offer mail order products beyond this location but there are no facts in evidence to indicate the geographic scope of this portion of the Complainant’s business. As for the Respondent’s <bbqdepot.com> site, it mentions a physical address in the city of St. George, Utah. Similarly, the site also appears to offer mail order products beyond this location but there are also no facts in evidence to indicate the geographic scope of this portion of the Respondent’s business.
Upon a review of the facts submitted in this case and those independently sought out by the Panel, it is not possible to definitively state what is the respective geographic scope of each of the party’s businesses. This, combined with the above-mentioned difficulty in determining the precise date on which the Respondent acquired the disputed domain name and when it began offering its BBQ products for sale, leads this Panel to conclude that it cannot determine whether the Respondent’s actions took place at a time when the Complainant had only common law trademark rights in its mark (i.e., prior to the time when Complainant applied for or registered it’s the BBQ DEPOT trademark with the USPTO). Thus, the Panel is not in a position to determine, by a preponderance of the evidence, whether the Respondent registered and uses the <bbqdepot.com domain name in bad faith.
In light of such open fact questions that are critical to the rights and defenses of the parties, this case would better be decided before a different forum, such as a court or an arbitrator, where the facts can be more fully developed through the processes available to such forums (e.g., discovery, document production, witness testimony and cross-examination, etc.).
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 <bbqdepot.com> domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: October 25, 2018
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