DECISION

 

AWGI, LLC v. Nicole Green

Claim Number: FA1808001801165

 

PARTIES

Complainant is AWGI, LLC (“Complainant”), represented by Mark F. Warzecha of Widerman Malek, PL, Florida, USA.  Respondent is Nicole Green

(“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amsatlas.com>, registered with GoDaddy.com, LLC.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 13, 2018; the Forum received payment on August 13, 2018.

 

On August 14, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amsatlas.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@amsatlas.com.  Also on September 12, 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 October 2, 2018.

 

On October 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

1. Complainant

1.    Complainant, AWGI, is in the business of providing moving services in the area of household goods and storage. Complainant has used the ATLAS mark for its services since at least 1949. Complainant has rights in the ATLAS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,718,117, registered Dec. 1, 2009). See Compl. p. 3. Respondent’s <amsatlas.com> is identical or confusingly similar to Complainant’s mark.

2.    Respondent lacks rights and legitimate interests in the <amsatlas.com> domain name because Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent attempts to create a faulty association between Complainant and Respondent and offers competing goods and services. See Compl. Ex. C. This faulty association created by Respondent has created actual confusion in Internet users. See Compl. Ex. D.

3.    Respondent registered and uses the <amsatlas.com> domain name in bad faith. Respondent attempts to commercially gain by passing off as Complainant to confuse internet users.

 

B.   Respondent

1.    Respondent, Atlas Moving Systems, has operated as a carrier of used household goods for over two years. Respondent has rights in Atlas Moving Systems because Respondent is licensed by the United States Department of Transportation. See Resp. Ex. 1. Respondent’s disputed domain name is not confusingly similar to Complainant’s mark because it includes a generic term that is common in the transportation industry, and Complainant does not have exclusive rights in the ATLAS mark for use on the Internet. See Resp. Exs. 3 & 4.

2.    Respondent has rights and legitimate interests in the <amsatlas.com> domain name because Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. Respondent is a carrier of household goods for over two years and uses the disputed domain name in connection with its business.

3.    Complainant fails to provide sufficient evidence that Respondent registered and uses the <amsatlas.com> domain name in bad faith. The webpages associated with the disputed domain name are characteristically different than those of Complainant. Additionally, no customers have reported confusion about the similarities between Respondent and Complainant’s overall look, as the email provided by Complainant is faulty because Complainant paid the individual to send an email to bolster its own case. See Resp. p. 1. Furthermore, Complainant ‘s objective seeks to obtain extensive exclusivity of the word “atlas” and damage Respondent’s business.

 

FINDINGS

1.    Respondent’s <amsatlas.com> domain name is confusingly similar to Complainant’s ATLAS mark.

2.    Respondent does have rights or legitimate interests in the <amsatlas.com> domain name.  Accordingly, as Complainant has failed to establish this element, the Panel declines to analyze the element of Bad Faith Registration and Use.

 

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.

 

Identical and/or Confusingly Similar

Complainant asserts rights in the ATLAS mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO may be sufficient to establish Complainant’s rights in the 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 information regarding its registration of the mark with the USPTO (e.g., Reg. No. 3,718,117, registered Dec. 1, 2009). See Compl. p. 3. Therefore, while conducting a Policy ¶ 4(a)(i) analysis, the Panel concludes that Complainant has rights in the ATLAS mark.

 

Next, Complainant alleges that Respondent’s <amsatlas.com> domain name is identical or confusingly similar to Complainant’s ATLAS mark. While Complainant does not make any specific assertions, the Panel sees that the domain name adds the “ams” string of letters to the mark along with the “.com” generic top-level domain (“gTLD”). Adding letters and a gTLD to a mark generally fails to distinguish a domain name from a mark. See Thomson Reuters Global Resources v. Richard Marsh / intach / Steven Szybillo / intach / Michael Wilczynski / intach / Gary Clarke / intach / James Saunders / intach / Paul Randolph/ intach / John Geisler / intach, FA 1516146 (Forum Oct. 2, 2013) (finding that the disputed domain names fully incorporate Complainant’s THOMSON REUTERS mark while merely adding the term “scie,” “ahci,” “sci,” or “ssci.” The Panel stated, “Each of these added terms constitutes an abbreviation of Complainant’s SCIENCE CITATION INDEX EXPANDED, ARTS & HUMANITIES CITATION INDEX, SCIENCE CITATION INDEX, or SOCIAL SCIENCES CITATION INDEX marks,” and held that such abbreviations constituted confusing similarity under Policy ¶ 4(a)(i).); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds during a Policy ¶ 4(a)(i) analysis, that Respondent’s disputed domain name is confusingly similar to Complainant’s mark.

 

While Respondent contends that the <amsatlas.com> domain name is comprised of a common and generic term and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

 

Rights or Legitimate Interests

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”).

 

The Panel finds 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 High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).

 

Respondent argues that it has rights and legitimate interests in the <amsatlas.com> domain name because Respondent uses the disputed domain name in connection with a bona fide offering of goods and services. Respondent argues it uses the disputed domain name in connection with its moving business, which is a bona fide offering of goods and services. Where a respondent uses a disputed domain name for a bona fide offering of goods and services it may have rights and legitimate interests in the disputed domain name. See Modern Props, Inc. v. Wallis, FA 152458 (Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name); see also Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”). Respondent claims it uses the disputed domain name for its own household moving business and provides its registration information with the United States Department of Transportation. See Resp. Ex. 1. Respondent also contends that the term in the domain name, ATLAS, is used all throughout the transportation industry due to the descriptive, generic nature of the term. Therefore, the Panel concludes that Respondent uses the disputed domain name in connection with transporting household goods.

 

Respondent also argues that the term of the <amsatlas.com> domain name is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet.  The Panel agrees with Respondent, and finds Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).

 

Registration and Use in Bad Faith

As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(ii), the Panel declines to analyze the remaining element of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i).

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <amsatlas.com> domain name REMAIN WITH Respondent.

 

John J. Upchurch, Panelist

October 22, 2018