Drumfit Holdings, Inc. v. Eckart Seeber / Seeber Music Productions
Claim Number: FA2009001911464
Complainant is Drumfit Holdings, Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is Eckart Seeber / Seeber Music Productions (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drumfit.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.
Aaron B. Newell, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 8, 2020; the Forum received payment on September 8, 2020.
On September 9, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <drumfit.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 September 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2020 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@drumfit.com. Also on September 9, 2020, 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 29, 2020.
An Additional Submission filed by Complainant was received on September 29, 2020.
On October 5 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Aaron B. Newell, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts:
a) that it has offered a physical education program comprised of cardiovascular activity featuring the use of drums / the act of drumming and has done so successfully in Canada since 2006 and in the USA at some time not long after this;
b) that it owns United States Trademark registration no 4363178 DRUMFIT in classes 28 and 41 (filed January 26 2012, registered 7 February 2013), and the domain name at issue is identical to this registration;
c) Respondent is passively holding the domain name and it has only ever loaded “parking pages and websites that display no substantive content” and therefore has not made legitimate noncommercial or fair use of the domain name;
d) Respondent is not commonly known by the domain name and Complainant has not authorized Respondent to use its DRUMFIT name;
e) Respondent’s passive holding is evidence of bad faith use and registration;
f) Respondent’s bad faith use and registration of the domain name is also evident by virtue of the following:
a. the domain name being used to divert users to a blank page as this is disruptive of Complainant’s business;
b. the mere fact that the domain name is identical to the Complainant’s trade mark (which also demonstrates that Respondent was aware of the Complainant and its rights prior to registering the domain name);
c. the fact that Respondent owns no intellectual property rights in the domain name and, in particular, no registered trademark rights for DRUMFIT.
B. Respondent
Respondent asserts in its Response and in a second e-mail sent to the Forum and the Complainant:
a) that it registered the domain name in 2009;
b) that “In 2000 we started music education programs and promoted school music programs including drum-related fitness in schools. Shortly thereafter we registered the domain "drumfit" to allow us to market the curriculum under that name. This was in the early 2000's. We have continued to offer PE programs through our education properties and continue to do so”;
c) that it used the name “drumfit” “years before claiming the domain” and did not know of Complainant’s use of DRUMFIT at the time;
d) that it registered the domain name before Complainant was founded;
e) that Complainant’s failure to register the domain name prior to 2009 suggests that Complainant’s “DRUMFIT” concept or name had not been developed by that time, contrary to Complainant’s submissions;
f) that it has documentary evidence of the use of the name “DRUMFIT” from “years before” 2006 but did not have time to prepare it, including because some of the evidence “will need to be obtained from partner agencies and that will take considerable time”;
g) That “Given the right offer, we may be open to discussing options for [Complainant] to purchase the domain name property from us. If this is something [Complainant] would like to pursue, [Complainant should] submit to us a proposal for such a buy-out”;
h) that while it suggested that it would be open to selling the domain name to the Complainant, “Like the sale of any business entity, the fact that I am open to selling it does not mean that I don not [sic] have legitimate rights to or interest in the business entity. Giving up the domain name “drumfit” will also mean for us to give up providing related services. So, yes it is like trading a business entitry [sic].”
C. Initial Additional Submission
Complainant filed an additional submission 29 September 2020 making the following assertions:
a) while Respondent asserts earlier use of DRUMFIT, Respondent has provided no evidence supporting this assertion;
b) that while Respondent appears to assert that it used the DRUMFIT name since 2000 or shortly thereafter, it did not register the domain name until 2009, years after Complainant had begun using the DRUMFIT name;
c) that contrary to Respondent’s assertion that it registered the domain name before the Complainant was founded, the use of DRUMFIT in respect of Complainant’s business actually dates back to 2006 and DRUMFIT has been consistently used by Complainant and/or an associated company since that time;
d) Respondent’s passive holding of the domain name and offer to sell the domain name are indicative of bad faith use and registration and a lack of legitimate interest;
D. Additional Submissions Pursuant to Procedural Order
Having reviewed the submissions of both parties the Panel decided that it required additional information in order to render a fair decision in the proceedings, mindful of the assertions made by both sides as to available evidence as well as the potential obstacles arising from the Covid-19 pandemic. It therefore issued the following Procedural Order:
Pursuant to Rule 12 of ICANN’s Uniform Domain Name Dispute Resolution Policy, each Party is hereby requested to provide additional information as detailed below, and have it e-mailed to the Forum and the other Party no later than 29 October 2020.
Further Information from Complainant
In respect of the Complainant, the Panel notes that Complainant alleges use of the DRUMFIT name from 2006, but the evidence submitted is insufficient to confirm this. Panel requests unequivocal relevant evidence of use of the DRUMFIT name in Canada and the United States from or from around this time.
Despite its omission from the Complaint, Panel considers that evidence from in/around this time may be available, having consulted the Canadian trademark register which, in respect of registration no TMA842765 DRUMFIT owned by Complainant's predecessor in title to US registration no 85551008, indicates "Used in CANADA since at least as early as February 2007 on services."
Panel is entitled to take the first use claim on the Canadian trademarks register at face value in this regard.
Further Information from Respondent
In respect of Respondent, Panel notes Respondent's 29 September 2020 assertions that:
...I would suggest at this point that the name “DRUMFIT” has been taken from us. I will be able to provide documentary evidence of the use of the tradename of drumfit by our organization years before 2009 and 2006 for that matter. I did not have enough time to prepare documentary evidence for this case due to the short notice period, and request an extension to provide the evidence. Some of the evidence will need to be obtained from partner agencies and that will take considerable time.
...our right to the domain name should not be diminished by the fact that we have registered our claim after having provided services as drumfit programs several years prior [to 2009].
...Respondent has coined the trade name long before the Claimant’s company existed.
Respondent also asserts that it commenced offering drum-related fitness programs in 2000 and that "at the time when we started Drumfit and registered the domain [Complainant's] organization did not exist yet."
Respondent is clearly aware of the relevance of these assertions to the proceedings and its submission suggests that it had been exploring availability of supporting evidence which it asserts should be available.
For completeness, Respondent's request for an extension of time is denied for non-compliance with Forum Supplemental Rule 6.
However, in light of the Procedural Order made herein in respect of the Complainant, and in fairness to Respondent, Panel requests unequivocal documentary evidence from Respondent supporting Respondent's assertions above.
Respondent failed to Respond to the Procedural Order. Nothing was received from Respondent in response to the Procedural Order.
Complainant on 29 October 2020 filed its response to the Procedural Order. The response consists of a brief submission and a declaration made by Ms Melissa Turcotte, operations manager for Complainant. Ms Turcotte provided evidence that:
a) Complainant has used the DRUMFIT name from 2006 and that in/around mid-April 2009 (approximately three weeks after the Respondent registered the domain name) the business was receiving unsolicited approaches from individuals who had heard about the program and wanted to know more;
b) Complainant’s programs were being covered by news media as early as 2009;
c) Complainant registered the domain name drumfit.ca in 2006 and used it for a commercial website featuring the DRUMFIT name since 2006.
a) Complainant has valid trademark rights in DRUMFIT;
b) Complainant and/or its predecessor in title and/or affiliated / authorized companies has / have used the name DRUMFIT for physical education programs since around 2006;
c) Complainant’s programs were attracting media attention and unsolicited interest from third parties as early as 2009.
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.
Complainant owns a valid trademark registration for DRUMFIT. This is identical to the domain name. Complainant meets the criteria at Policy Paragraph 4(a)(i).
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.
Complainant has made out this prima facie case: it has asserted that Respondent is not commonly known by DRUMFIT, that <drumfit.com> has not been used by Respondent for a bona fide commercial offering (or that Respondent has made any proactive use of the domain name, for that matter), and that it has never authorized Respondent or any connected individual or entity to use the name DRUMFIT and/or the domain name.
Respondent refuted Complainant’s assertions and asserted use of DRUMFIT in the early 2000’s for a musical physical education program. Respondent mentioned in submissions on 29 September 2020 that evidence of this is available but that it needed more time to collate the evidence, and that some of it was in the possession of third parties.
Respondent did not need to provide voluminous evidence to support its assertion as to use of DRUMFIT from the “early 2000’s”, especially given its further assertion that its DRUMFIT activities were ongoing. If some evidence would have been with third parties, presumably there would also be documented correspondence with these third parties and/or the possibility to identify, even in vague terms, the roles of these third parties in Respondent’s purported DRUMFIT business.
Respondent was given a second opportunity by way of the Panel’s Procedural Order to provide said evidence but failed to respond. Despite the Procedural Order, the last communication on record from Respondent is a solicitation of an offer for purchase of the domain name. The Panel has conducted its own review and cannot find any evidence of use of DRUMFIT or the domain name at issue by Respondent, or of any relevant use of DRUMFIT whatsoever prior to that of Complainant.
Despite being given two opportunities to do so, Respondent has failed to rebut Complainant’s prima facie case of a lack of legitimate interest.
Complainant has therefore satisfied the requirement under Policy Paragraph 4(a)(ii).
Panel finds a number of assertions made by Respondent to be problematic and/or contradictory. Given Respondent’s failures to provide any evidence whatsoever of business activities that it says have been ongoing for nearly two decades, Panel queries Respondent’s assertions as to prior use of the name DRUMFIT and its circa 2000 authorship of the DRUMFIT name and concept without knowledge of the Complainant.
In this connection, it is notable that Respondent asserts that it used the DRUMFIT name from around 2000, but did not register the domain name until 2009 when, it appears, Complainant’s business had already started to thrive and grow significantly.
Complainant must make out its case on a balance of probabilities. Complainant’s evidence is thin, however having regard to the totality of the circumstances, especially:
a) the fact that – despite the extra time afforded by the Procedural Order for Respondent to provide just a modicum of compelling evidence of use of the name over a near twenty-year period – Respondent has done nothing to enable the Panel to discern any bona fide reason for it to own the domain name;
b) the absence of any evidence of bona fide use of the domain name since its 2009 registration;
c) the unique nature of the DRUMFIT name and the use of this identical name in the domain name;
d) the fact that the Complainant was already running a successful business under the DRUMFIT name that was receiving international attention and media coverage when Respondent registered the domain name; and
e) the Respondent’s attempt to use unsupported and apparently incredible assertions of its historical use of the domain name to solicit a monetary offer from the Complainant
The Panel finds that, on the balance of probabilities, the Respondent registered the domain name in the knowledge of the Complainant and its activities, and with the intention of selling it to the Complainant and/or otherwise using it to profit from the Complainant’s reputation and activities that were ongoing at the time of registration.
Accordingly the Panel finds that the Respondent registered and used the domain name in bad faith under Policy Paragraph 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <drumfit.com> domain name be TRANSFERRED from Respondent to Complainant.
Aaron B. Newell, Panelist
Dated: November 9, 2020
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