ProStar GeoCorp., Inc. v. Jed Crosby
Claim Number: FA1702001717337
Complainant is ProStar GeoCorp., Inc. (“Complainant”), represented by Raymond R. Tabandeh of Lewis Roca Rothgerber Christie, LLP, California, USA. Respondent is Jed Crosby (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <transparentearth.com>, registered with DomainSite, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 14, 2017; the Forum received payment on February 14, 2017.
On February 15, 2017, DomainSite, Inc. confirmed by e-mail to the Forum that the <transparentearth.com> domain name is registered with DomainSite, Inc. and that Respondent is the current registrant of the name. DomainSite, Inc. has verified that Respondent is bound by the DomainSite, 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 February 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2017 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@transparentearth.com. Also on February 16, 2017, 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 March 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 registered the TRANSPARENT EARTH mark with the USPTO (e.g., Reg. No. 4,716,399, registered Apr. 7, 2015). Respondent’s <transparentearth.com> domain is confusingly similar as it incorporates the entire TRANSPARENT EARTH mark, less the space, and only adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in <transparentearth.com>. Respondent is not commonly known by Complainant’s mark. Complainant has not authorized Respondent to use its mark. Respondent does not make a bona fide offering of goods and services or legitimate noncommercial fair use because it inactively holds the disputed domain name and does not make any use of it.
Respondent registered and is using the <transparentearth.com> in bad faith. Respondent inactively holds the disputed domain name by not making an active use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, ProStar GeoCorp., Inc., is a mobile and cloud technology development and software company that provides utility owners and pipeline operators with geospatial solutions for improving their asset management and damage prevention practices. Complainant registered the TRANSPARENT EARTH mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,716,399, registered Apr. 7, 2015). Complainant has used the mark since early 2013. Respondent’s <transparentearth.com> domain is identical to Complainant’s mark as it incorporates the entire TRANSPARENT EARTH mark, less the space, and only adds the generic top-level domain (“gTLD”) “.com.”
Respondent, Jed Crosby, created the <transparentearth.com> domain name on December 9, 2009. Respondent renewed the registration of the domain name on November 30, 2016. Respondent uses the disputed domain to resolve to a webpage with hyperlinks, presumably to commercially benefit Respondent from pay-per-click fees.
Respondent has no rights or legitimate interests in <transparentearth.com>.
Respondent did not register, nor renew, the registration of transparentearth.com> 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 registered the TRANSPARENT EARTH mark with the USPTO on April 7, 2015. Panels have established that registration of a mark with the USPTO sufficiently demonstrates a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Further, where a registered mark exists, the relevant date of rights in the mark is the filing date. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Therefore, Complainant has established rights in the mark under Policy ¶ 4(a)(i) dating back to September 8, 2014.
Complainant notes it has strong common law trademark rights, but fails to provide evidence of such rights that may serve to predate the registration of the disputed domain name.
Respondent’s <transparentearth.com> is identical to Complainant’s TRANSPARENT EARTH mark as it fully incorporates its mark, less the space, and solely adds the gTLD “.com.”
Respondent has no rights or legitimate interests in <transparentearth.com>. Complainant has not authorized Respondent to use its TRANSPARENT EARTH mark. Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). The WHOIS identifies “Jed Crosby” as the registrant. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent failed to make an active use and merely uses the resolving webpage to passively hold it. However, the disputed domain actually resolves to a webpage with hyperlinks, presumably to commercially benefit Respondent from pay-per-click fees. Hyperlinks include: “Google Earth Maps,” “Transparent Background,” and “Transparent”). Use of an identical or confusingly similar domain to display unrelated hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum August 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
Complainant claims that Respondent registered and uses the <transparentearth.com> domain name in bad faith. Complainant contends that Respondent fails to make an active use of the disputed domain. As previously noted above, Respondent uses the disputed domain to place hyperlinks to presumably benefit from pay-per-click fees. Using a confusingly similar or identical domain to generate pay-per-click fees can show bad faith. See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum August 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained).
However, Complainant has failed to show that Respondent registered or renewed the <transparentearth.com> domain name in bad faith. Respondent’s initial registration of the domain name on December 9, 2009, predates Complainant’s trademark application on September 8, 2014, by over four years. Generally, a respondent’s registration of a domain name prior to a complainant’s establishment of trademark rights would not have been in bad faith because the registrant could not have known of complainant’s then non-existent right. See Harow v. Future Media Architects, Inc., D2017-0134 (WIPO March 6, 2017) (“Except in highly-limited circumstances, when a domain name is registered by Respondent before Complainant’s relied-upon right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right (see paragraph 3.1 of the WIPO Overview 2.0).”).
Complainant contends that Respondent’s renewal of the registration of the domain name constitutes bad faith. However, the mere renewal of a domain name is not generally treated as a new registration for determining bad faith, especially where there is no evidence of a change of use of the domain name prior to the renewal or that Respondent had Complainant’s trademark in mind when renewing the registration. See Harow v. Future Media Architects, Inc., supra.; see also paragraph 3.7 of the WIPO Overview 2.0; but see Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO Mar. 1, 2010) (stating, “treating a renewal the same as a registration comports with the language—very plain and direct language—of paragraph 2 [of the Policy].”). There being no evidence of Respondent’s change of use of the domain name or that Respondent had Complainant’s mark in mind, Complainant has failed to show that Respondent registered the <transparentearth.com> domain name in bad faith.
Complainant 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 <transparentearth.com> domain name REMAIN WITH Respondent.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 30, 2017
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