Greencycle, Inc. v. Gail Loos / Ingenious Marketing
Claim Number: FA1404001553841
Complainant is Greencycle, Inc. (“Complainant”), represented by Charles Brown, Illinois, USA. Respondent is Gail Loos / Ingenious Marketing (“Respondent”), represented by Terrence M. Wyles of STARTUP IP LAW, LLC, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <greencycler.com> and <thegreencycler.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
The Hon. Charles A. Kuechenmeister (ret.), Professor David Sorkin and Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2014; the National Arbitration Forum received payment on April 11, 2014.
On April 14, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <greencycler.com> and <thegreencycler.com> domain name is 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 April 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2014 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@greencycler.com, postmaster@thegreencycler.com. Also on April 18, 2014, 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 May 2, 2014.
Both parties made Additional Submissions which were compliant with Supplemental Rule 7.
On May 15, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed The Hon. Charles A. Kuechenmeister (ret.), Professor David Sorkin and Debrett G. Lyons (chair) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in GREENCYCLE and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent broadly denies those claims and submits, in particular, that:
· the domain names are comprised of the generic terms “green” and “cycle” which are commonly used in Complainant’s industry and by society generally;
· the domain names are not confusingly similar to Complainant’s trademark because the parties’ goods are not used or sold in competition with each other in the marketplace;
· Respondent has rights and a legitimate interest in the domain names by reason of the fact that it was offering for sale a device by the name of the “green cycler” before it became aware of Complainant’s business and trademark;
· Respondent was not aware of Complainant’s business or trademark when it registered the domain names;
· Complainant’s actions are an attempt at reverse domain name hijacking.
C. Additional Submissions
As already indicated, both parties made Additional Submissions which have been taken into account by the Panel in reaching its Decision and which are discussed as necessary in what follows.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides waste recycling services by reference to the trademark GREENCYCLE.
2. The trademark GREENCYCLE is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 2,275,544 registered September 7, 1999.
3. Respondent has sold a consumer product designed to shred organic kitchen waste for composting under the name, the “green cycler”.
4. Respondent registered the domain name <thegreencycler.com> on August 10, 2010 and the <greencycler.com> domain name on August 19, 2012.
5. There is no commercial agreement between the parties, and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
6. Respondent approached Complainant to negotiate a co-existence arrangement, but no agreement was reached.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established that a trademark registered with a national authority is evidence of trademark rights[i]. Since Complainant provides evidence of its registration with the USPTO, Panel is satisfied that Complainant has trademark rights in the term GREENCYCLE.
Panel is also satisfied that the disputed domain names are confusingly similar to Complainant’s trademark. For the purposes of comparing the domain names with that trademark, the gTLD, “.com”, can be ignored since it has no source distinguishing value[ii]. The comparison then requires only consideration of the trivial differences between the trademark, GREENCYCLE, and the terms “greencycler” and “thegreencycler”; terms bearing added matter of no distinguishing value.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of both disputed domain names.
Panel regards this as a convenient point to address certain submissions which become relevant to the later analysis, albeit that the parties had something to say of them in connection with paragraph 4(a)(i) of the Policy. They do not alter the primary finding just made.
The question of confusing similarity caused the parties to give much space to matters which might be of interest to a Court asked to decide a claim of trademark infringement but which have been regarded as irrelevant to the determination to be made under paragraph 4(a)(i) of the Policy.
So, the consensus opinion of UDRP panelists has been that the generic quality of a domain name (or, for that matter, the non-distinctive character of a complainant’s trademark) is a matter best considered in connection with legitimate interests or good/bad faith under paragraphs 4(a)(ii) or (iii) of the Policy, rather than under paragraph 4(a)(i).
Likewise, the fact that the parties goods or services are non-competitive and might be sold through different trade channels or offered to different sections of the public is not a matter with which paragraph 4(a)(i) is concerned; rather, it is a factor which might have bearing, once more, on the legitimacy of a respondent’s interest in a domain name or on the assessment of whether registration or use of the domain name was in bad faith or not[iii].
Complainant is required to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The publicly available WHOIS information identifies Respondent as “Gail Loos / Ingenious Marketing” and so there is no prima facie evidence that Respondent might be commonly known by either disputed domain name.
There is no evidence that Respondent has any registered trademark rights. Respondent submitted an application with the USPTO to register GREENCYCLER as a trademark on September 28, 2010 but, after examination, the application was rejected on January 12, 2011 due to an alleged likelihood of confusion with Complainant’s prior registered trademark. Respondent did not contest the Office decision, and its application was deemed abandoned.
There is no evidence that Complainant has authorized Respondent to use the trademark. Respondent contacted Complainant’s counsel for permission to use a trademark corresponding with the contested domain names, but Complainant did not consent and negotiations were inconclusive.
Complainant submits that there is no evidence that the disputed domain names have been used in connection with a bona fide offering of goods or services prior to notice of the dispute since Respondent’s use constitutes an infringement of its registered trademark.
Panel finds that Complainant has established prima facie cases against both domain name registrations and so the onus shifts to Respondent to establish a legitimate interest in the domain names.
Based on Respondent’s submissions, the only live issue is whether Respondent’s conduct falls under paragraph 4(c)(i); that is, did Respondent use or make demonstrable preparations to use the domain name or names corresponding to the website in connection with a bona fide offering of goods before it had notice of the dispute?
Addressing first the question of timing, the Panel notes that the Forum served the Complaint on Respondent on April 18, 2014. That would certainly be the date Respondent was deemed to be aware of these Administrate Proceedings but paragraph 4(c)(i) uses the expression “any notice” and so Panel takes the view, as have others before it, that this means the date on which Respondent was reasonably aware that there was a likely contest to its ownership of the disputed domain names.
That might be said to be January 12, 2011 or soon thereafter, the date on which Respondent received that adverse official examination report from the USPTO to its own application to register GREENCYCLER, rejected on the basis of Complainant’s prior registration.
Nonetheless since that USPTO action was contestable and since it might be said that the Office action put Respondent on notice of Complainant’s trademark rights rather than on notice of a dispute, the better view is that the proper date Respondent was on notice of the dispute was the date on which it learned that Complainant has not prepared to consent to its use of the trademark, described no more precisely than the “fall of 2013”; certainly, by November 30, 2013 when Complainant sent a cease and desist letter to Respondent.
Panel notes that both disputed domain names were registered before that time - <thegreencycler.com> was registered on August 10, 2010 and <greencycler.com> on August 19, 2012. Panel notes too that Complainant acknowledges that Respondent began use of the website <thegreencycler.com> on October 9, 2010 (Complaint, para. 7; Exhibit 5-A).
Exhibit 5-A to the Complaint is a screenshot from the so-called “WayBack Machine” Internet Archive, but it does not show the historical webpage itself. Instead the Complaint exhibits current 2014 screenshots from Respondent’s website. These show a kitchen appliance in the nature of a bench top grinder for small domestic food scraps. The same pages show the appliance to have received the 2013 “Pinnacle Award” for best new product from the “National Hardware Show”. There are references to other accolades.
Based only on the evidence provided by Complainant, there is support for Respondent’s broad claim to a mature business behind the “green cycler” product. The fact that the product received a 2013 innovation award indicates to the Panel that the domain names were used in connection with a bona fide offering of goods before the fall of 2013.
Panel finds on balance that Respondent has shown a legitimate interest in the domain names pursuant to paragraph 4(c)(i) of the Policy and, accordingly, Complainant has failed to establish the second limb of the Policy.
With that finding it is not necessary for the Panel to decide more. Nonetheless, Panel considers that the following paragraph 4(a)(iii) analysis fosters a better understanding of this decision as a whole.
Complainant must prove, on the balance of probabilities that the disputed domain names were registered and used in bad faith.
Further guidance can be found in paragraph 4(b) of the Policy, however, on application of the relevant standard of proof, namely, on the balance of probabilities, the Panel does not find that Respondent registered either of the disputed domain names in bad faith.
In spite of a populist view of UDRP complainants (shared with Complainant here) that a respondent in UDRP proceedings is on constructive notice of a complainant’s trademark rights by reason of the existence of a Federal trademark registration, the predominant viewpoint of UDRP panelists has been to reject that argument and insist on a respondent’s actual knowledge of a complainant’s trademark rights[v].
Something must then be said of Complainant’s reputation. Complainant’s assertion that it has used the trademark since 1992 is supported by its Federal trademark registration, which carries a first use in commerce date in 1992. Complainant gives indications of the size and turnover of its business and of its advertising and promotional efforts. Were Complainant without a Federal trademark registration to underpin its claim to trademark rights under paragraph 4(a)(i) of the Policy, Panel would have little doubt that it enjoyed the benefit of common law trademark rights acquired through use and reputation.
Complainant describes its reputation as lying in the area of “pre-consumer food waste, post-consumer food waste, recycling, compost and treatment goods and services”. Panel questions whether that description has been crafted to amplify Complainant’s claim of an overlap of interests with Respondent; Panel would instead, from the evidence, characterize Complainant’s business as that of commercial waste treatment and waste recycling services.
Respondent contends that it registered the domain names in good faith, unaware of Complainant’s trademark and business. That claim is at least partly flawed since the domain name <greencycler.com> was registered after Respondent received the USPTO office action on its own trademark application which cited Complainant’s trademark.
Leaving that fact to the side for one moment, the question is whether, having regard to the descriptive character of the words “green” and “cycle”/ “cycler”, and to the fact that the services provided by Complainant are well removed from the type of domestic kitchen appliance sold by Respondent, is it more likely than not that Respondent targeted Complainant’s trademark at the times it registered the domain names?
Panel finds that it is not. Panel finds that the disputed domain names were not registered in bad faith. In reaching that finding Panel was also influenced by the following additional factors:
· There is no evidence of bad faith behavior on Respondent’s part, either before or after it became aware of Complainant’s rights;
· Respondent entered into good faith negotiations with Complainant regarding a co-existence agreement after it became aware of Complainant’s rights;
· Respondent’s attempt to register its own trademark with the USPTO under application no. 85140370 shows a limited class 7 claim for “pre-composting grinders” in keeping with its actual goods of interest;
· The later registration of <greencycler.com> is the registration of another domain name substantially identical to Respondent’s first registration and assessed by the same standards as the earlier registration.
Complainant has also failed to establish the third element of the Policy in respect of both domain names.
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and has engaged in reverse domain name hijacking by initiating these proceedings.
Panel disagrees. There is no compelling evidence that Complainant has used the Policy to harass Respondent. On the contrary, it proved one of the three elements of the case, confusing similarity of the domain names with its trademark. Otherwise, its submissions regarding rights and bad faith were at least arguable[vi].
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <greencycler.com> and <thegreencycler.com> domain names REMAIN WITH Respondent.
Debrett G. Lyons
The Hon. Charles A. Kuechenmeister (ret.)
Professor David Sorkin
Panelists
Dated: 28 May 2014
[i] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i).
[ii] See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
[iii] See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) finding that confusing similarly of terms under the Policy is not assessed by the tests employed under the Lanham Act.
[iv] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
[v] See, for example,Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010)
[vi] See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
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