Mystery Tackle Box, Inc. v. John Connolly
Claim Number: FA1812001819248
Complainant is Mystery Tackle Box, Inc. (“Complainant”), represented by Alexis Crawford Douglas of K&L Gates LLP, Illinois, USA. Respondent is John Connolly (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopkarl.com>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2018; the Forum received payment on December 3, 2018.
On December 4, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <shopkarl.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 December 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@shopkarl.com. Also on December 6, 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 December 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in KARL’S and SHOP KARL’S and alleges that the disputed domain name is confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells fishing tackle, fishing rods, reels, line, clothing, and hunting and camping accessories (“the Goods”);
2. Complainant has since June 18, 2018 conducted an online business selling the Goods from a website at www.shopkarls.com;
3. the disputed domain name was registered on June 19, 2018; and
4. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its asserted trademarks or to register any domain name incorporating its asserted trademarks.
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 based on 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[i] Complainant provides evidence of two pending applications for registration with the United States Patent and Trademark Office – one being Application No. 87923906 filed May 16, 2018 for the trademark KARL'S BAIT & TACKLE BY THE CATCH CO & Design [Image Omitted] (“the Logo Mark”) and the second being Application No. 88119346 filed September 17, 2018 for registration of the trademark KARL’S BAIT & TACKLE (“the Word Mark”).
The Panel notes that neither application has so far matured to registration and so those applications cannot form the basis of a claim to trademark rights for the purposes of the Policy. Nonetheless, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights and Complainant rightly states that UDRP “panels have found that a governmental registration is not required so long as the complainant can establish common law rights.”
Proof of such common law rights becomes the critical aspect of these proceedings and in that regard the key submissions in the Complaint are that:
Complainant owns common law rights in the trademark KARL’S dating back to 2012, when the company began using this name for its primary marketing character, the fictitious Karl VonDibble, in the company’s ads and marketing.
On June 18, 2018, Complainant launched its <shopkarls.com> website prominently featuring a logo with the dominant term KARL’S . Since that time, Complainant has conducted millions of dollars worth of sales through its <shopkarls.com> website with customers across the United States.
As the Panel reads these submissions, Complainant asserts some type of fictitious personality right since 2012 in a social media character by the name of Karl VonDibble, coupled with a trading reputation in the name KARL’S / SHOP KARL’S by reason of online sales from the website www.shopkarls.com (“the Complainant’s Website”) since June last year. The claim is that these usages support a claim to common law trademark rights in KARL’S and/or SHOP KARL’S.
The Panel is not satisfied that the evidence presented supports that claim to common law rights. The evidence includes reference to a YouTube video published July 9, 2012 which features the character Karl VonDibble and makes reference to “Karl’s Mystery Tackle Box”. Viewers can each month discover new fishing lures and tackle at an advertised website, www.mysterytacklebox.com. Nothing is said of that website in the Complaint albeit that it essentially corresponds with Complainant’s name. The Panel’s own enquiries revealed that the web address redirects internet users to the Complainant’s Website. Further, a search of the words “mystery tackle box” reveals a Wikipedia entry which states, inter alia, that:
Mystery Tackle Box is a monthly fishing gear subscription service founded in 2012 and based in Chicago, Illinois. Users subscribe to the service on a monthly or other basis, in which they select the fishing supplies which they receive in a “mystery box”. … In 2016, Mystery Tackle Box was rebranded as The Catch Co.; the subscription service continued to be called Mystery Tackle Box. In June 2018, the company launched Karl’s Bait & Tackle, an e-commerce site including Mystery Tackle Box, as well as clothing and related products. … Orders come in boxes designed for different fish, and are delivered on a monthly basis.
The Panel observes that the social media evidence on which Complainant relies shows what might be a number of potential trademarks, including MYSTERY TACKLE BOX, KARL’S MYSTERY TACKLE BOX, KARL VONDIBBLE and iterations of the Word Mark and the Logo Mark. Nonetheless, taken as a whole there is almost no use of the name KARL’S without the addition of other words and/or design elements and given the commonality of that forename, nothing to ground a claim to common law trademark rights in that word, solus. Further, the only support for a claim to common law trademark rights in the expression SHOP KARL’S is the claim that since June 2018 “Complainant has conducted millions of dollars worth of sales through [Complainant’s] website with customers across the United States.” The Panel can attach little weight to that unsubstantiated assertion and as a general observation notes that it would only be in limited circumstances and based on compelling evidence that common law trademark rights would be held to have come into existence in a period of six months, especially where the asserted trademark is composed of commonplace elements, as here.
The Panel therefore finds that Complainant has failed to show trademark rights in a term which is either identical or confusingly similar to the disputed domain name. Accordingly, the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.
No findings required.
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <shopkarl.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: January 8, 2019
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
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