Guthy-Renker, LLC v. 0cean 0cean
Claim Number: FA1804001780592
Complainant is Guthy-Renker, LLC (“Complainant”), represented by Kristin Kosinski of Cislo & Thomas LLP, California, USA. Respondent is 0cean 0cean (“Respondent”), represented by Joshua Segall, Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theoceanx.com>, registered with NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Eleni Lappa as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2018; the Forum received payment on April 5, 2018.
On April 6, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <theoceanx.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@theoceanx.com. Also on April 10, 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.
A timely Response was received and determined to be complete on May 4, 2018.
On May 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eleni Lappa 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Guthy-Renker, LLC, submits that it is a multi-channel consumer goods marketing company which offers back end direct response services such as order fulfillment services of consumer products, customer service, mail order services, customer service management, operation of call centers, and development of advertising campaigns. Complainant asserts that it uses its OCEAN X mark in connection to these services, and has rights therein based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,196,521, registered May 2, 2017). See Compl., Declaration of Daniel M. Cislo (“Cislo Decl.”), Ex. A. Complainant further points out that Respondent’s <theoceanx.com> domain name is confusingly similar to Complainant’s OCEAN X mark as the particular domain name consists of the aforementioned trademark owned by Complainant in its entirety, plus the added word “the” and the “.com” generic top-level domain (“gTLD”).
Complainant further assets that Respondent has no rights or legitimate interests in the <theoceanx.com> domain name, and that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the OCEAN X mark in any manner, and to the extent Respondent may claim to be commonly known by “OCEAN X,” it has not rights to the name due to Complainant’s previous rights. Complainant submits that Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use, rather, the domain name in question resolves to a website which purports to offer a decentralized blockchain trading platform. See Compl., Cislo Decl. Ex. F. Complainant also argues that Respondent has gone to great lengths to conceal its identity, leading to the inference the offerings at the disputed domain name are fraudulent.
Complainant thereafter asserts that Respondent registered and is using the <theoceanx.com> domain name in bad faith, as it claims that Respondent has not conducted legitimate business activity with respect to the domain name, but instead has registered and used the name in bad faith to disrupt Complainant’s business. Complainant argues that Respondent uses the name to confuse and attract Internet users to its competitive website for commercial gain, and that Respondent failed to respond to Complainant’s attempts to resolve this matter outside of this administrative proceeding, indicating bad faith.
B. Respondent
Respondent, calling itself The Ocean X, submits that it is a business which operates a platform for trading virtual currencies.
Respondent argues that Complainant has not established rights in the OCEANX mark sufficient to bring this action and that third parties have filed for United States registrations for the OCEANX trademark, and one party even owns a prior registration for the OCEANX mark several years before Complainant filed its application for the same trademark or its alleged date of first use of the mark (Reg. No. 3,793,698, May 25, 2010). See Resp. Ex. B. Co-existence of third party registrations of the mark indicate Complainant does not have exclusive rights to use the mark. Further, Respondent submits that there is little evidence of potential or actual confusion as Complainant and Respondent operate in completely different industries and that Complainant has not established its OCEAN X mark is famous.
Respondent asserts that it is commonly known by the <theoceanx.com> domain name, and that it is developing a new trading protocol called “0x,” and devised the name “the 0cean” in order to associate itself with the platform. Respondent claims that it found users had trouble locating the website and changed its name to “The Ocean X.” Further, Respondent submits that its refusal to respond to Complainant is not evidence Respondent is not operating a legitimate business, as it considers previous attempts to engage to be bullying and meritless. See Resp. Segall Decl. ¶ 5. Respondent points out that its contact information is easily available, and it has been writing public blog article explaining its business since August 2017. See https://medium.com/@theoceanx. Despite Complainant’s contentions that Etherium-based businesses are fraudulent and unregulated, Respondent asserts that trading platforms are highly regulated and new regulations are still developing. See Resp. Segall Declaration ¶ 6. Respondent claims that it has retained a number of attorneys to pursue government licenses and comply with regulations.
Respondent suggests that it is not using the <theoceanx.com> domain name in bad faith, as Respondent does not compete with Complainant, does not share distribution channels, and does not appeal to the same customer base.
Complainant, Guthy-Renker, LLC, is a multi-channel consumer goods marketing company which offers back end direct response services such as order fulfillment services of consumer products, customer service, mail order services, customer service management, operation of call centers, and development of advertising campaigns. Complainant uses its OCEAN X mark in connection to these services, and has rights therein based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,196,521, registered May 2, 2017). See Compl., Declaration of Daniel M. Cislo (“Cislo Decl.”), Ex. A.
Respondent offered no evidence of prior registered rights related to the domain name under review or accumulated use based rights.
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 rights in the OCEAN X mark based upon registration of the mark with the USPTO (e.g. Reg. No. 5,196,521, registered May 2, 2017). See Compl., Cislo Decl., Ex. A. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). The Panel therefore holds that Complainant’s registration of the OCEAN X mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <theoceanx.com> domain name is confusingly similar to the OCEAN X mark, as the name consists entirely of the mark plus the term “the” and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel therefore determines that the <theoceanx.com> domain name is confusingly similar to the OCEAN X trademark per Policy ¶ 4(a)(i).
The Panel notes 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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <theoceanx.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the OCEAN X mark in any way. Complainant argues that even though Respondent’s company is currently named “Ocean X,” it only recently changed its name, and regardless, Respondent cannot establish rights in the company name. See Compl., Cislo Decl. ¶ 11; Van de Bundt Decl. ¶ 6. Respondent therefore has the burden of proof when it comes to offering substantive evidence of being commonly known by the domain name <theoceanx.com> but has failed to submit any solid evidence in this respect. The Panel therefore determines, under Policy ¶ 4(a)(ii) that Respondent has not been commonly known by the <theoceanx.com> domain name.
Complainant contends Respondent’s intentional use of the <theoceanx.com> domain name to disrupt Complainant’s business by creating a likelihood of confusion with Complainant’s mark in order to attract Internet users for commercial gain is evidence of Respondent’s bad faith. Use of a confusingly similar domain name for commercial purposes unrelated to or competing with a complainant’s business can indicate bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). The Panel notes Complainant’s contention that the <theoceanx.com> domain name resolves to a website purportedly offering blockchain currency services, which is a commercial use related to Complainant’s business as the provider of online, e-commerce services. See Compl., Cislo Decl. Ex. F. The Panel therefore determines that the evidence indicates Respondent registered and used the domain name <theoceanx.com> in bad faith per Policy ¶¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <theoceanx.com> domain name be TRANSFERRED from Respondent to Complainant.
Eleni Lappa, Panelist
Dated: May 23, 2018
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