Cincy Cuts, LLC v. David Donley / Brittney Donley
Claim Number: FA1809001806333
Complainant is Cincy Cuts, LLC (“Complainant”), represented by Brian J. O'Connell of Strauss Troy Co., LPA, Ohio, USA. Respondents are David Donley and Brittney Donley (“Respondents”), Ohio, USA, represented by Jeffrey B. Sams, Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cincycuts.com>, <cincicuts.co>, <cincicuts.net>, <cincicuts.org>, <cincicuts.info>, <cinci-cuts.com>, <cincicuts.com>, <cincycuts.co>, <cincycuts.net>, <cincycuts.org>, <cincycuts.info>, and <cincycuts.biz>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
The Forum appointed David Sorkin and Sandra J. Franklin as Panelists and David H. Bernstein as the Presiding Panelist in this matter.
Complainant submitted a Complaint to the Forum electronically on September 17, 2018; the Forum received payment on September 17, 2018.
On September 18, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that (1) the <cincycuts.com>, <cincycuts.co>, <cincycuts.net>, <cincycuts.org>, <cincycuts.info>, and <cincycuts.biz> domain names are registered with GoDaddy.com, LLC and that Mr. Donley is the current registrant of those names; and (2) that the <cincicuts.co>, <cincicuts.net>, <cincicuts.org>, <cincicuts.info>, <cinci-cuts.com>, <cincicuts.com> domain names are registered with GoDaddy.com, LLC and that Ms. Donley is the current registrant of those names. GoDaddy.com, LLC has verified that Respondents are bound by the GoDaddy.com, LLC registration agreement and have thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy).
On September 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 2018 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@cincycuts.com, postmaster@cincicuts.co, postmaster@cincicuts.net, postmaster@cincicuts.org, postmaster@cincicuts.info, postmaster@cinci-cuts.com, postmaster@cincicuts.com, postmaster@cincycuts.co, postmaster@cincycuts.net, postmaster@cincycuts.org, postmaster@cincycuts.info, and postmaster@cincycuts.biz. Also on September 19, 2018, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 8, 2018.
On October 15, 2018, Complainant filed an Additional Submission in reply to the Response. On October 19, 2018, Respondents replied with an Additional Submission.
On October 23, 2018, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed David Sorkin and Sandra J. Franklin as Panelists and David H. Bernstein as the Presiding Panelist in this matter.
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[s]" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondents to Complainant.
This proceeding involves two concrete cutting companies, Donley Concrete Cutting, LLC ("Donley Concrete"), affiliated with the Respondents, and Complainant Cincy Cuts, LLC (“Cincy Cuts”), both of which are doing business in Cincinnati, Ohio.
On September 13, 2017, Complainant filed the Articles of Organization for Cincy Cuts, LLC with the Ohio Secretary of State (Registration Number 4072394) and began using the name “Cincy Cuts” to market its concrete cutting business. Since filing the trade name, Complainant has continuously used “Cincy Cuts” in commerce to identify and market its concrete cutting business. Complainant does not own any registered trademarks or service marks in the Cincy Cuts name.
Donley Concrete began doing business in central Ohio in 1997. In 2011, Donley Concrete expanded its business to Cincinnati, Ohio, setting up a new limited liability company with the name Donley Concrete Cutting—Cincinnati, LLC. Respondents David Donley and Brittney Donley are affiliated with Donley Concrete; the exact nature of their affiliation is not clear from the record, though it appears that they are the owners of the company.
On October 1, 2017, Mr. Donley, using Domains by Proxy, LLC as a privacy shield, registered the following disputed domain names: cincicuts.com, cincicuts.co, cincictus.net, cincicuts.org, cincicuts.info, and cinci-cuts.com. On October 24, 2017, Ms. Donley registered a second set of domain names: cincycuts.com, cincycuts.biz, cincycuts.co, cincycuts.info, cincycuts.net, and cincycuts.org. The domain names all redirect to Donley Concrete’s main website <donleyconcrete.com>. Mr. and Ms. Donley also appear to have registered cincicuts.us and cincycuts.us, but those domain names are not at issue in this proceeding.
A. Complainant
(i) Identical or confusingly similar
Complainant contends that its state trade name registration confers the exclusive right to use “Cincy Cuts.” Complainant provided evidence that the Articles of Organization for Cincy Cuts, LLC were filed with the Ohio Secretary of State (Registration Number 4072394) on September 13, 2017. Complainant maintains that, under Ohio Revised Code § 1329.01(A)(1), the default trade name of an Ohio limited liability company is the name used in the Articles of Organization filed with the Ohio Secretary of State.
Complainant asserts that disputed domain names are identical and confusingly similar variations of its protected trade name and likely to cause consumer confusion, satisfying paragraph 4(a)(i) of the Policy.
(ii) Rights or legitimate interests
Complainant alleges that Respondents have no rights or legitimate interests in the disputed domain names. Complainant contends that it defies credulity that Donley Concrete would market itself as “Cincy Cuts.” Respondents have failed to produce any evidence that they used the phrase “Cincy Cuts” or any variation in association with their business before Complainant entered the market in 2017. If, as Respondents maintain, the disputed registration represents an innocent effort to increase online presence through a geographically descriptive domain name, then logic dictates that Donley Concrete should also have sought registration for domain name variations associated with its business in Columbus, Ohio. The absence of such corresponding “ColumbusCuts” registrations further suggests Respondents’ only interest in the disputed domain names was to divert online traffic to their own website.
(iii) Registered and used in bad faith
Complainant alleges that Donley Concrete registered the disputed domain names as an act of retaliation and in order to divert online business to Respondents’ website. Accordingly, Respondents’ use of the disputed domain names falls within the examples of bad faith set out in paragraph 4(b)(iv) of the Policy.
Complainant argues that the chronology of events surrounding the two registrations demonstrates Respondents’ bad faith. Both sets of registrations closely track critical events in an employment dispute between Donley Concrete and a former sales representative, Josh Kilgore, who left Donley Concrete on August 24, 2017, and began working for Cincy Cuts on September 11, 2017. Upon termination of Kilgore’s employment at Donley Concrete, Kilgore and Donley Concrete reached a severance agreement, providing for five separate severance payments. Kilgore received the first of his five payments, but Donley Concrete stopped payments after learning that Kilgore had begun working for Cincy Cuts. On September 28, 2017, Kilgore’s legal counsel sent a demand letter to Donley Concrete for continuance of the severance payments. The following business day, October 1, Mr. Donley registered the first set of the disputed domain names, all of which began with “Cinci,” under the cover of a privacy shield. On October 3, another Donley Concrete employee, Greg Mullins, left Donley Concrete for Cincy Cuts. On October 23, Kilgore and Donley Concrete reached a settlement. The next day, October 24, Ms. Donley registered the second set of disputed domain names, beginning with “Cincy.”
Complainant accordingly asserts that the registration timeline renders apparent that Respondents did not register the disputed domain names as part of a legitimate promotional strategy, but rather to retaliate against Cincy Cuts after two of their employees left Donley Concrete to work for its competitor.
B. Respondents
(i) Identical or confusingly similar
Respondents deny that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Respondents maintain that Complainant is conflating two separate legal rights: the trade name registration that exists, and trademark rights that do not. Respondents concede that Complainant registered the trade name Cincy Cuts, LLC, but contend that trade name registration alone does not confer exclusive rights to use the term “Cincy Cuts.”
Respondents further assert that Cincy Cuts is not protectable as a trademark. Respondents submit that “Cincy Cuts” is, at best, a weak mark, either generic or merely descriptive. Even if the mark were descriptive, Complainant would be required to show acquired secondary meaning to claim trademark rights. However, Complainant has provided no market research, expert testimony, or other evidence to show that the name has acquired secondary meaning. Because Complainant has failed to show ownership of any trademark or service mark registrations and has provided no evidence that “Cincy Cuts” has acquired secondary meaning, Respondents allege that Complainant has no rights to any relevant trademark that is identical or confusingly similar to the disputed domain names.
(ii) Rights or legitimate interests
Respondents claim that they have rights and legitimate interests in the disputed domain names to the extent that they are using the domain names to market and promote Donley Concrete in the Cincinnati area. “Cincy” and “Cinci” are both common local shorthand for Cincinnati, where Donley Concrete began doing business in 2011. Respondents explain that, after learning Kilgore intended to compete with Donley Concrete, the firm sought to increase its online presence in the Cincinnati market by registering the disputed domain names and redirecting customers to Donley Concrete’s website <donleyconcrete.com>.
(iii) Registered and used in bad faith
Respondents contend that they did not register and use the disputed domain names in bad faith. They argue that they could not have acquired the domain names for the primary purpose of transferring them to the trademark owner because Complainant has no legal rights in the name and is therefore not a trademark owner. To the contrary, Respondents allege that Complainant initiated the proceedings in a bad faith attempt to force a transfer of the domain names in dispute and burden Donley Concrete with unwanted litigation expenses.
C. Additional Submissions
Complainant and Respondents both submitted Additional Submissions. The Panel has reviewed and considered the additional submissions by both parties in reaching the decision.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities that control the domain names at issue are effectively the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, provides that, where a complaint is brought against more than one respondent, the question is whether:
"(i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties."
Common control is apparent in the instant case. Respondents are both affiliated with Donley Concrete and do not dispute that they acted in concert in registering these domain names. Moreover, Respondents have responded through the same counsel and have not challenged consolidation in this case. It clearly would be equitable to both parties for these disputes to be resolved in a coordinated fashion. Accordingly, the Panel holds that these cases may appropriately be consolidated into a single proceeding.
Preliminary Issue: Parallel Litigation
The Panel finds that the disputed domain names are identical and confusing similar to Complainant’s trade name, but that Complainant has failed to prove that it has trademark rights in the name. As such, the Panel is constrained to find that Complainant has not satisfied the first factor. The Panel notes, though, that the Respondents’ conduct smacks of bad faith, and may well justify relief in a different forum.
Holdings
As many panels have found during the nearly two decades that the UDRP has existed, the UDRP is not a forum for resolution of all disputes relating to domain names. See, e.g., Thread.com, LLC v. Poploff, WIPO Case No. D2000-1470. Rather, it is an administrative proceeding designed to address a particularly pernicious and egregious form of piracy: the bad faith use and registration of domain names that violate a third party’s trademark rights.
In the absence of trademark rights, a UDRP challenge cannot succeed. That is the reason the Panel is constrained to rule for the Respondents in this case. As Respondents properly note, Complainant has failed to establish that it owns trademark rights in the term Cincy Cuts. It appears to be comprised of two descriptive terms – Cincy, a common shorthand for Cincinnati (the PTO usually requires a disclaimer of Cincy for companies operating in Cincinnati, see, e.g., Reg. Nos. 5257640, 5150060, 5247341, 4938246, 4827070, 4821934, 4483971), and Cuts, a descriptor for cutting (the PTO has required a disclaimer of Cut for marks related to concrete cutting, see, e.g., Reg. Nos. 3185360 and 2222168). The test is the meaning of the mark as a whole, see Princeton Vanguard v. Frito-Lay, 786 F.3d 960 (Fed. Cir. 2015), and we leave it to Complainant to make its arguments elsewhere. Complainant has not met its burden here.
Complainant’s registration of Cincy Cuts, LLC as a trade name is insufficient to establish trademark rights. Rather, the name must be used in commerce and must be shown to have acquired distinctiveness through secondary meaning in order to serve as a trademark. Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105. It may be possible for Complainant to show secondary meaning, but it has not submitted any evidence on which this Panel can make such a determination.
That said, the Panel is sympathetic to Complainant’s plight. Respondents’ assertion that they coincidentally registered the domain names with no knowledge of the name of Complainant’s business is not credible. Rather, it seems clear to the Panel that Respondents registered these domain names in retaliation for Complainant’s hiring of former Donley Concrete employees.
Respondents have not asserted that Complainant’s hiring of these employees was unlawful or otherwise improper. Accordingly, Complainant was well within its rights to have hired these employees. Respondents may fairly compete against Cincy Cuts in the marketplace, but they should not do so through dirty tricks such as registering a dozen domain names that are identical or confusingly similar to the Cincy Cuts name and diverting internet users from the Complainant to the Donley Concrete website. That Mr. Donley did so through a privacy shield – which seems to have been designed to hide the fact that these domain names were registered by the employees’ former employer – only reinforces the bad faith conduct of the Respondents, or at least Mr. Donley.
The Panel therefore concludes that Respondents have no rights or legitimate interests in these domain names. The assertion that Respondents were simply registering some domain names to raise their visibility in Cincinnati is entirely non-credible, and it calls into question the other assertions that Respondents make in their submission. As Complainant points out, the registration timeline is extremely suspect, and supports an inference of bad faith retaliation rather than an inference of innocent good faith. The Panel therefore finds that Respondents’ registration of these domain names was undertaken in bad faith, and that the domain names were used in bad faith to knowingly divert internet users from Complainant to Respondents’ website. Ms. Donley further showed her bad faith use of the domain names by offering to sell one of them – cincycuts.com – to Complainant for $2,500, a price far in excess of the registration costs.
But, bad faith is not enough under the UDRP. Rather, to succeed in a proceeding under the UDRP, Complainant must establish trademark rights, and that showing was lacking here. Accordingly, the Panel holds that Complainant has failed to carry its burden of proving an entitlement to transfer of the disputed domain names.
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 <cincycuts.com>, <cincicuts.co>, <cincicuts.net>, <cincicuts.org>, <cincicuts.info>, <cinci-cuts.com>, <cincicuts.com>, <cincycuts.co>, <cincycuts.net>, <cincycuts.org>, <cincycuts.info>, and <cincycuts.biz> domain names REMAIN WITH Respondents.
David H. Bernstein, Presiding Panelist
Sandra J. Franklin, Panelist
David Sorkin, Panelist
Dated: November 3, 2018
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