Thomas Guess v. Andrew Moore
Claim Number: FA1405001561012
Complainant is Thomas Guess (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is Andrew Moore (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americangreedny.com>, registered with Gandi SAS.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2014; the National Arbitration Forum received payment on May 23, 2014.
On May 23, 2014, Gandi SAS confirmed by e-mail to the National Arbitration Forum that the <americangreedny.com> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 May 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@americangreedny.com. Also on May 23, 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 June 12, 2014.
On June 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq, 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has rights in the GREED mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,308,943 registered March 26, 2013).
2. Complainant has common law rights in the GREED mark dating back to November 21, 2011 when Complainant began using the GREED mark in commerce and in connection with goods and commercial products, namely, hats, hooded sweatshirts, jackets, jeans, pants, shirts, and shoes. See Complainant’s Exhibit 6.
3. Respondent’s <americangreedny.com> domain name is confusingly similar to Complainant’s GREED mark. Respondent adds the geographically descriptive terms “American” and “NY” to Complainant’s mark.
4. Respondent has no rights or legitimate interests in the <americangreedny.com> domain name.
a. Respondent cannot claim or show any rights in the disputed domain name that is superior to Complainant’s rights.
b. Respondent uses the disputed domain name to promote confusion among users looking for Complainant’s goods offered in connection with its mark.
5. Respondent registered and is using the <americangreedny.com> domain name in bad faith.
a. Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business. Respondent redirects Internet users to its own website which offers nearly identical goods.
b. Respondent uses the disputed domain name in conjunction with two geographic terms to lure unsuspecting Internet users to its site when they are searching for Complainant’s business. Respondent is attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark.
c. Respondent had knowledge of Complainant and Complainant’s mark when it registered the disputed domain name.
d. Respondent’s use or uses of Complainant’s mark are entitled to First Amendment protection only when such use is part of a communicative message, not when respondent’s marks are used to identify the source of a product or service.
B. Respondent
1. Respondent’s <americangreedny.com> domain name is not confusingly similar or identical to the mark Complainant states it has rights in.
2. Respondent had no intent to harm or disrupt Complainant’s business, or its GREED mark.
3. Respondent will place the <americangreedny.com> domain name on suspension until the renewal date of July 31, 2015. If Complainant wishes to purchase the disputed domain name from the Registrant, arrangements can be made outside the submitted Complaint.
4. The disputed domain name was registered by Respondent on July 31, 2012.
Complainant established that it had rights in the marks contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s mark.
Respondent has rights to or legitimate interests in the disputed domain name.
Respondent has not registered the disputed domain name 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.
Complainant claims to use the GREED mark in connection with apparel, namely, hats, hooded sweatshirts, jackets, jeans, pants, shirts, and shoes. Complainant asserts its rights in the GREED mark through its registration with the USPTO (Reg. No. 4,308,943, filed August 1, 2012, registered March 26, 2013). Prior panels have found that providing evidence of a registration for a mark with the USPTO is sufficient evidence to establish rights in a given mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel notes the Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) decision, where the panel found that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction. Additionally, the Panel sees that prior panels have routinely found that the relevant date for trademark rights is the application’s filing date. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). The Panel concludes that Complainant has rights in the GREED mark dating back to its filing date of August 1, 2012.
Complainant additionally claims that it has common law rights in the GREED mark dating back to November 21, 2011 when Complainant began using the GREED mark in commerce and in connection with its products, namely, hats, hooded sweatshirts, jackets, jeans, pants, shirts, and shoes. See Complainant’s Exhibit 6 and 7. Complainant argues that since November 21, 2011, it has continually used the GREED mark in connection with its business and commercial goods. See id. Prior panels have found that a complainant has common law rights in a mark where it provides evidence of secondary meaning in the mark, by showing a continuous and ongoing use of the given mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name). In light of Complainant’s supporting evidence, the Panel thus concludes that Complainant has established common law rights in the GREED mark under Policy ¶ 4(a)(i).
Complainant next alleges that Respondent’s <americangreedny.com> domain name is confusingly similar to Complainant’s GREED mark. Complainant contends that Respondent adds the geographically descriptive terms “American” and “NY” to Complainant’s mark. Complainant urges that the term “NY” is an abbreviation for New York. In Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) the panel concluded that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark. Additionally, the Panel sees that Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Prior panels have conclusively found that adding a gTLD and a geographic term does not differentiate a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel agrees, and finds that Respondent’s <americangreedny.com> domain name is confusingly similar to Complainant’s GREED mark under Policy ¶ 4(a)(i).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent claims that it had no intent to harm or disrupt Complainant’s business, or its GREED mark. Respondent contends that its <americangreedny.com> domain name is not the only domain name to use the GREED mark. See <americangreedapparel.com> registered by Perfect Privacy, LLC. The Panel sees that Respondent submitted a corporate filing with the NYS Department of State Division of Corporations, dated March 21, 2012 with the business name AMERICAN GREED LLC. Prior panels have concluded that a respondent has rights in a domain name that features respondent’s company name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name). The Panel also sees that Respondent claims that it has filed for dissolution of its company. The Panel concludes that at the time the disputed domain name was registered, Respondent had rights in the disputed domain name since it displayed the majority of Respondent’s business name.
As the Panel concludes that Respondent has rights or legitimate interests in the <americangreedny.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel thereby concludes that Respondent did not register or use the disputed domain name in bad faith.
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 <americangreedny.com> domain name REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: July 7, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page