DECISION

 

READY Thinking, LLC v. RYAN LEVESQUE, RL & ASSOCIATES LLC

Claim Number: FA1512001654728

PARTIES

Complainant is READY Thinking, LLC (“Complainant”), represented by Jaime Rich Vining of Friedland Vining, P.A., Florida, USA.  Respondent is RYAN LEVESQUE, RL & ASSOCIATES LLC (“Respondent”), represented by Renée L. Duff of Renee L. Duff, P.C., New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <askformula.com> and <theaskformula.com>, registered with FastDomain Inc.

 

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 30, 2015; the Forum received payment on December 30, 2015.

 

On December 31, 2015, FastDomain Inc. confirmed by e-mail to the Forum that the <askformula.com> and <theaskformula.com> domain names are registered with FastDomain Inc. and that Respondent is the current registrant of the names.  FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 January 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2016 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@askformula.com, postmaster@theaskformula.com.  Also on January 4, 2016, 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 January 25, 2016.

 

On January 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.

 

That same day, January 28, 2016, Complainant made Additional Submissions which were filed in a timely manner according to the Forum's Supplemental Rule #7.

 

On February 2, 2016, Respondent also made Additional Submissions which were filed in a timely manner according to the Forum's Supplemental Rule #7.

 

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts both registered and unregistered trademark rights in ASKING FORMULA.

 

Complainant 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.  In particular, Complainant asserts that the <askformula.com> domain name redirects Internet users to Respondent’s website to sell a book in competition with Complainant, while the <theaskformula.com> domain name resolves to a website with revenue generating links to third parties.

 

B. Respondent

Respondent argues that Complainant has not properly demonstrated trademark rights in ASKING FORMULA because it has knowingly presented inaccurate or incomplete information to the Panel.

 

Respondent argues that the domain names are, in any case, distinguishable from the expression, ASKING FORMULA.

 

Respondent argues that it is commonly known by the <askformula.com> and <theaskformula.com> domain names and uses them for the legitimate purpose of marketing, promoting, and selling its book.

 

C. Additional Submissions

As indicated, both parties made Additional Submissions which Panel has taken into account in reaching its decision and which are referred to as necessary in the Discussion which follows.

 

FINDINGS

Panel has made its decision based on the following findings of fact or credible, uncontested claims:

1.    the parties are, to use Complainant’s words, “competitors in a niche industry and both have authored books focused on sales strategies”;

2.    Complainant is the owner of United States Patent and Trademark Office (“USPTO”) Reg. No. 4,332,318, filed on January 10, 2011 and registered on May 7, 2013 for ASKING FORMULA (“the Trademark”);

3.    in 2012, Complainant caused publication of a book entitled The Asking Formula ;

4.    the disputed domain names were registered on October 17, 2014;

5.    on April 21, 2015, Respondent caused publication of a book entitled Ask (“the Ask book”)[1];

6.    the domain name <askformula.com> redirects Internet users to the website, www.getaskbook.com, which promotes the sale of the ASK book;

7.    the domain name <getaskbook.com> was registered on November 9, 2015;

8.    the domain name <theaskformula.com> resolves to a website with miscellaneous third party advertisements;

9.    on November 16, 2015, Respondent received a cease and desist letter from Complainant’s representatives; and

10. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.

 

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.

 

Trademark rights / identity or similarity

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – an 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.  In this case, Complainant lays claim to registered and common law (unregistered) rights in the Trademark.  For reasons which emerge, Panel will examine both claims.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[2]  Since Complainant provides evidence of its USPTO registration for the Trademark, Panel is satisfied that it has trademark rights.  For the sake of completeness, Panel addresses here Respondent’s objections to that finding. 

 

Registration No. 4,332,318 was accepted and registered for goods and services in classes 9, 16 and 41.  Under Federal trademark legislation in the United States, a so-called “Section 7” request can be made to correct or amend a registration.  Respondent asserts that Complainant knowingly misrepresented its registered rights to the Panel.  In particular, Respondent notes that the Complaint was signed on December 30, 2015, one day after Complainant filed a Section 7 request with the USPTO to remove Class 9 from the Trademark registration.

 

Panel does not find any material misrepresentation.  Although Panel can see from a current search of USPTO records that the class 9 goods have been deleted in their entirety from the registration, the Trademark remains registered in classes 16 and 41.  That is sufficient to establish “trademark rights”.  These are not trademark infringement proceedings.  There has never been a requirement under the UDRP that for a complainant to have trademark rights, it must have protection in classes corresponding with the web content of the disputed domain name.  Were that so, the absurd result that might follow is that a trademark owner could need registration in all 45 classes of the Nice International classification system in order to successfully bring UDRP proceedings in respect of an unused domain name.  In any event, Panel notes that books (at least in non-electronic form) fall in class 16 and are still within the ambit of the registration.

 

Panel does not find that deletion of the class 9 goods impacts on Complainant’s proven trademark rights.  Nor does Panel find, for the purposes of the “Certification” which forms part of the Complaint and which requires that the information given is complete and accurate, that there was a material misrepresentation made to the Panel.

 

Respondent’s incidental objection to the specimens of use of the Trademark as required as part of the Section 7 amendment has for essentially the same reasons no impact on Panel’s finding on trademark rights.

 

Respondent argues, further, that Registration No. 4,332,318 is open to cancellation (presumably in at least class 16 although this is not explicit) because the expression, ASKING FORMULA, does not function as a trademark.

 

Panel notes that this is a contentious aspect of trademark law which has been argued and litigated in numerous common law jurisdictions.  To the extent that the law is clear in the United States, the seat of the Trademark registration, the argument might be put that the expression, ASKING FORMULA, has only been used as the title for a single work, rather than for a series of books, and would not be preceived by the public as an indicator of trade source and so would not perform the essential function of a trademark.

 

Panel reiterates that these are not trademark infringement proceedings where a respondent might cross-claim for invalidation of the registration on which the suit is founded.  Nor is it the province of this Panel to investigate the basis for the registration when another, more appropriate, authority has done so already.

 

Finally, and more for the purposes of what follows in relation to the other aspects of the Policy, Panel finds on the evidence that by reason of its use and promotion since 2012, Complainant has shown common law rights in the Trademark.  The evidence shows that, by the time the Complaint was filed (but also by October 2014 when the disputed domain names were registered) the Trademark was well advertised and promoted such that Complainant also had unregistered trademark rights.

 

Moving on, and for the purposes of comparing the domain names with the Trademark, the generic top-level domain gTLD, “.com”, can be ignored.[3]  The comparison then resolves to the Trademark, ASKING FORMULA, with the terms “ask formula” and “the ask formula”.  Respondent submits that “the difference in spelling is enough” and points to the fact that Registration No. 4,332,318 carries a disclaimer in the following terms:

 

NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "FORMULA" APART FROM THE MARK AS SHOWN

 

Panel finds that the variations from the Trademark are trivial, being in one case addition of the definite article “the” and, in both cases, change of tense of the verb from “asking” to “ask”.[4] 

 

Disclaimers attached to trademark registrations by the USPTO are carefully framed.  The added words, “…apart from the mark as shown”, give the disclaimer an exact meaning which is that Complainant has “rights” in the word FORMULA only as it is part of the whole Trademark.  In other words, Complainant has no monopoly in the word FORMULA, but has rights in the composite expression, ASKING FORMULA, to the extent that other traders might seek to register a confusingly similar term.  Panel finds that the disclaimer has no significant impact on the comparisons to be made in these proceedings between the Trademark (as a whole) and the disputed domain names (as wholes).

 

Panel finds that the domain names are confusingly similar to the Trademark in terms of paragraph 4(a)(i) of the Policy and so Panel finds that Complainant has satisfied the first limb of the Policy. 

 

Rights or Legitimate Interests

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.

 

Complainant need only 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.[5]

 

The publicly available WHOIS information identifies Respondent as “RYAN LEVESQUE, RL & ASSOCIATES LLC” 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 (relevant) trademark rights and there is no evidence that Complainant has authorized Respondent to use the Trademark.  Complainant denies any such authorization.

 

The domain names were registered on October 17, 2014.  There is no evidence that the disputed domain name <theaskformula.com> has been used in connection with a bona fide offering of goods or services prior to notice of the dispute.  Complainant provides evidence that the domain name resolves to a website with miscellaneous third party advertisements.  Such use is not bona fide.[6]

 

The disputed domain name <askformula.com> redirects Internet users to the website, www.getaskbook.com, which promotes the sale of the ASK book.  That promotion is in direct conflict with Complainant’s business and is not bona fide.

 

Despite Respondent’s submissions to the contrary, Panel finds that Complainant has clearly established a prima facie case.  Accordingly, the onus shifts to Respondent to establish a right or legitimate interest in the domain names.

 

Respondent’s arguments in effect rely on paragraphs 4(c)(i) and (ii) above.  It is convenient to consider first Respondent’s claim that it is commonly known by the domain names.  Panel begins with a closer examination of the Ask book.

 

The jacket of the Ask book shows, centrally placed and in large letters, the word and title of the work, Ask.  Punctuated then by some sort of artistic device, there follows below in different and considerably smaller font, the descriptive passage:

 

“The counterintuitive online formula to discover exactly what your customers want to buy… create a mass of raving fans… and take any business to the next level”

 

Panel notes that at various points in its submissions Respondent attempts to characterize the “title” of the work as:

 

“Ask: The counterintuitive online formula to discover exactly what your customers want to buy… create a mass of raving fans… and take any business to the next level”

 

Respondent will from time to time call what is shown above, the “full title” of the book, or will describe the additional wording (beyond “Ask”) as a “tag line”.

 

Annex 3 to the Response is a sworn declaration from Respondent.  In that declaration, and again at various points in the Respondent’s submissions, is the claim that the allegedly extended title is shortened by readers and those aware of the work to the expression “Ask Formula”.

 

What follows in the Respondent’s declaration are a number of assertions based on that claim – i.e. – that the Ask book is (also) known as “Ask Formula”, principally that Respondent is known by the public by the domain names and the name “Ask Formula”.

 

Annex 4 to the Response contains, amongst other similarly themed material, a transcript of episode 84 of a podcast series, “Read To Lead”.  Episode 84 is apparently devoted to Respondent and the Ask book.  There it is said that Respondent wanted “more than anything to share what he calls his ‘Ask Formula’ with as many people as possible.”  Respondent refers later to “the formula I’d developed through a long period of trial and error: the Ask Formula.”

 

The publication date of the podcast and other material in Annex 4 is not plain but seems to follow on in 2015 after publication of the Ask book.

 

Panel has a number of difficulties with these submissions.  First, Panel finds that the word “Ask”, simpliciter, is clearly the title of the book; the added descriptive matter is just that - a teaser to potential readers of what they might find inside.

 

Secondly, Panel rejects the claim that the alleged full or extended title is commonly shortened by readers and those aware of the work to the expression “Ask Formula”.  That assertion is not supported by any evidence.  In the absence of such evidence, the likelihood that the Ask book would be referred to as “Ask Formula” must be weighed against the fact that the word “formula” is one of twenty-seven words making up the synopsis of the book.  Panel does not accept that the Ask book would be referred to alternatively as “Ask Formula”.

 

Further, references to the expression “Ask Formula” in Annex 4 are either quotation of Respondent in interview or, in the handful of instances of third party use, are simple repetition of that expression by bloggers and others responding to Respondent’s statements.

 

In conclusion, there is nothing before Panel to support the claim that Respondent was commonly – that is, publicly – known by either of the domain names at the material time.

 

Turning then to paragraph 4(c)(i) of the Policy, the question is whether before any notice of the dispute, Respondent’s used, or made demonstrable preparations to use, the domain names or names corresponding thereto in connection with a bona fide offering of goods or services.

 

Respondent argues in that regard that it has used the domain names for the legitimate purpose of marketing, promoting, and selling the Ask book.

 

Panel observes that there is no evidence of use of the <theaskformula.com> domain name since October 17, 2014 other than in connection with a website carrying miscellaneous third party advertisements.   Accordingly, there is nothing to rebut the prima facie case against Respondent and Panel finds that Respondent has no rights or interests in this domain name.

 

As discussed, the <askformula.com> domain name redirects Internet users to the website, www.getaskbook.com, where the Ask book is promoted and offered for sale.  Respondent asserts that it registered the domain name <getaskbook.com> and redirected Internet traffic from the disputed domain name, <askformula.com>, to www.getaskbook.com in order to help assuage Complainant’s concerns as expressed in its pre-Complaint correspondence with Respondent.

 

Panel has difficulty with this account of events.  Respondent declares that it received a letter of demand from Complainant’s representatives “on or about November 16, 2015”.  Panel’s research shows that the domain name <getaskbook.com> was registered by Respondent on November 9, 2015.  It is therefore difficult to reconcile how creation of the <getaskbook.com> name and redirection of traffic to www.getaskbook.com was the result of the letter of demand. 

 

Nonetheless Panel finds that this awkward account of events is a distraction from the more elementary fact that Respondent’s “right” or “legitimate interest”, in so far as it exists, is in respect of the Ask book (and, ipso facto, the word “Ask”) and not, on the evidence discussed already, in the term “Ask Formula”.

 

Respondent’s declaratory statements that “[T]he disputed domain names were registered on October 17, 2014 for the purpose of marketing, promoting and selling the Ask book” in accordance with an asserted business plan made two month earlier, and Respondent’s claim that “hundreds of thousands of dollars have been invested in this marketing and promotional campaign”, do not legitimize the fact that Respondent has sought to promote the Ask book by the use of a domain name which Panel has found to be confusingly similar to Complainant’s Trademark and in which Respondent has not shown any  right or legitimate interest.

 

There is no evidence of bona fide use of the <askformula.com> domain name between October 17, 2014 and time in November 2015 when traffic was purportedly redirected to <getaskbook.com>; certainly none afterwards.

 

Panel finds that Respondent has no rights or interests in either disputed domain names and so finds that Complainant has satisfied the second limb of the Policy in respect of both names.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and are being used in bad faith. 

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

 

Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above.  Panel has already found the disputed domain names to be confusingly similar to the Trademark.  Whilst there is nothing to suggest that Respondent is a domain name broker, the evidence shows Respondent to own more than 100 domain names.  Panel finds it likely Respondent is benefiting financially somehow from the described use of the domain name <theaskformula.com>.  The evidence is clear that that domain name <askformula.com> is used for commercial gain.  In terms of paragraph 4(b)(iv) of the Policy, Panel finds that Respondent is using the domain names to attract, for commercial gain, Internet users to Respondent’s website or other online locations by creating a likelihood of confusion with the Trademark.[7]

 

Panel finds bad faith under paragraph 4(b)(iv) of the Policy.

 

That conclusion is dispositive of these proceedings but for the avoidance of doubt, Panel would find, as separate matters, registration in bad faith and use in bad faith of both names.  Use in bad faith for the reasons given already; registration in bad faith since Panel finds on the balance of probability that Respondent knew of and targeted Complainant’s Trademark on October 17, 2014.

 

Respondent declares that receipt of the letter of demand in November 2015 “was the first time we learned of the existence of the Complainant and the ASKING FORMULA mark.”

 

Panel has already found Complainant to have common law (unregistered) rights in the Trademark.  The parties are direct competitors in a niche field.  Annex A to the Complaint is a sworn declaration of John Baker, founder and President of Complainant.  Baker’s book, The Asking Formula, was as noted, published in 2012.  The evidence is that in 2013 and 2014 the book received industry awards.  The evidence is that since 2012 Complainant has used the Trademark not only on that book but in relation to leadership programs.  The evidence is that Complainant is the owner of a number of domain names by which its goods and services are promoted.  These include, inter alia, <theaskingformula.com>, registered on January 17, 2011 and <askingformula.com> registered on August 27, 2013 (“Complainant’s domain names”).

 

On the evidence as a whole, Panel finds that Respondent had actual knowledge of Complainant and of its Trademark at October 17, 2014.  To find otherwise, Panel must accept that within the same field of business in the same country, Complainant’s book – on the evidence extensively promoted since 2012 – had not come to the awareness of Respondent.  Panel would also need to accept that when Respondent came to register the disputed domain names, it did not become aware of Complainant’s domain names or was simply incurious about them.  Panel is not prepared to make those findings and finds the Respondent knew of and targeted the Trademark.

 

Panel finds registration in bad faith and use in bad faith in respect of both disputed domain names.

 

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 <askformula.com> and <theaskformula.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

Dated:  February 15, 2016