3form, LLC v. Vernon Hughes / 3FORMmedia
Claim Number: FA1803001778261
Complainant is 3form, LLC (“Complainant”), represented by James W. McConkie of Workman Nydegger, Utah, USA. Respondent is Vernon Hughes / 3FORMmedia (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <3formmedia.com>, registered with Tucows Domains Inc., Tucows, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2018; the Forum received payment on March 22, 2018.
On March 23, 2018, Tucows Domains Inc., Tucows, Inc. confirmed by e-mail to the Forum that the <3formmedia.com> domain name is registered with Tucows Domains Inc., Tucows, Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc., Tucows, Inc. has verified that Respondent is bound by the Tucows Domains Inc., Tucows, 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 April 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2018 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@3formmedia.com. Also on April 3, 2018, 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 April 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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 designs, manufactures, and sells building material and décor in connection to the 3FORM mark. Complainant has rights in the 3FORM mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,984,748, registered Aug. 16, 2005). Respondent’s <3formmedia.com> domain name is confusingly similar to Complainant’s 3FORM mark as Respondent adds the generic term “media” and a “.com” generic top level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <3formmedia.com> domain name. Respondent is not authorized or permitted to use Complainant’s 3FORM mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolves to a blank page, indicating to users that the page is “reserved.”
Respondent registered and is using the <3formmedia.com> domain name in bad faith. Respondent disrupts and diverts users to the disputed domain name. Additionally, Respondent is inactively holding the disputed domain name which may indicate bad faith. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights the 3FORM mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is 3form, LLC (“Complainant”), of Salt Lake City, Utah, USA. Complainant is the owner of multiple domestic registrations for the mark 3FORM, which it has used continuously since at least as early as 2002, in connection with its design, manufacture, and sale of building materials and décor.
Respondent is Vernon Hughes / 3FORMmedia of Cape Town, South Africa. Respondent’s registrar’s address appears to be Toronto, Canada. The Panel notes the <3formmedia.com> domain name was registered on or about October 22, 2017.
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 claims to have rights in the 3FORM mark through its trademark regsitrations with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides copies of its USPTO registrations for the 3FORM mark (e.g., Reg. No. 2,984,748, registered Aug. 16, 2005). The Panel here finds that Complainant has sufficiently demonstrated its rights in the 3FORM mark per Policy ¶ 4(a)(i).
Next, Complainant contends Respondent’s <3formmedia.com> domain name is confusingly similar to Complainant’s 3FORM mark. Complainant argues Respondent merely adds a generic term and gTLD to the mark. Such changes to a complainant’s mark does not negate any confusing similarity between the disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Complainant indicates Respondent merely adds the term “media” and a “.com” gTLD to Complainant’s 3FORM mark. The Panel here finds that Respondent’s <3formmedia.com> domain name is confusingly similar to Complainant’s 3FORM mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant here has set forth the requisite prima facie case.
Complainant asserts Respondent has no rights or legitimate interests in the <3formmedia.com> domain name because Respondent is not authorized to use Complainant’s 3FORM mark and is not commonly known by the disputed domain name. In the event a respondent fails to submit a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Complainant provides a printout of relevant WHOIS information that identifies Respondent as “Vernon Hughes / 3FORMmedia.” While the registered name makes it appear that Respondent may have some relation to Complainant, Respondent did not provide any evidence to support such a conclusion concerning the WHOIS information. See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). The Panel here finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues Respondent is not using the <3formmedia.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent is inactively holding the disputed domain name. Failure to make active use of a disputed domain name does not evince a finding a respondent makes a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”); see also Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant provides a screenshot of the disputed domain name, which resolves to a website with a colored background and the message, “Reserved for 3formmedia.com”. The Panel here finds that Respondent’s failure to make active use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
Complainant has proven this element.
The Panel notes Complainant claims Respondent registered and used the <3formmedia.com> domain name in bad faith under Policy ¶ 4(b)(iii) and (iv), but makes no specific argument. However, the Panel notes that under Policy ¶ 4(b) specific arguments are not required for a finding of bad faith, but are illustrative rather than exclusive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues Respondent registered and is using the <3formmedia.com> domain name in bad faith because Respondent failed to make active use of the disputed domain name. Failure to use a disputed domain name indicates bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provides a screenshot of the disputed domain name, which resolves to a webpage with a colorful background and the message, “Reserved for 3formmedia.com.” The Panel here finds that Respondent’s failure to make active use of the disputed domain name constitutes bad faith per Policy ¶ 4(a)(iii).
Furthermore, Complainant contends Respondent had actual and/or constructive knowledge of Complainant’s rights in the 3FORM mark at the time Respondent registered the <3formmedia.com> domain name. Complainant argues that due to the fame and Complainant’s registrations of the 3FORM mark, it is highly improbable Respondent was unaware of Complainant’s rights in the 3FORM mark. The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the 3FORM mark at the time of registration and this constitutes bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <3formmedia.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 9, 2018
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