King Ranch Saddle Shop, Inc. and King Ranch IP, LLC v. GMO Registry, Inc
Claim Number: FA1901001823928
Complainant is King Ranch Saddle Shop, Inc. and King Ranch IP, LLC (“Complainant”), represented by Christopher Weimer of Norton Rose Fulbright US LLP, Texas, USA. Respondent is GMO Registry, Inc (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kingranchsaddle.shop>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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 January 7, 2019; the Forum received payment on January 7, 2019.
On January 10, 2019, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <kingranchsaddle.shop> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 January 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2019 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@kingranchsaddle.shop. Also on January 16, 2019, 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 February 11, 2019, 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.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: King Ranch Saddle Shop, Inc. and King Ranch IP, LLC. Complainants state that they are affiliates that jointly own the federally registered trademark at the center of this proceeding. Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. The Panel here accepts the evidence in the Complaint as sufficient to establish the requisite nexus or link between the Complainants and for purposes of this decision treats them as a single entity.
Panel Note: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative matter proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Japanese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Japanese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Japanese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Pursuant to UDRP Rule 11(a), the Panel here finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant operates a leather goods and saddlery retail business. Complainant has rights in the KING RANCH mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,357,279, registered June 13, 2000). Respondent’s <kingranchsaddle.shop> domain name is confusingly similar to Complainant’s mark because Respondent includes the KING RANCH mark in the domain name, adds the generic term “saddle” and the “.shop” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <kingranchsaddle.shop> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert users to an inactive, parked page displaying text in Japanese.
Respondent registered and uses the <kingranchsaddle.shop> domain name in bad faith because Respondent uses the disputed domain name for an inactive parking page. Further, Respondent had actual knowledge of Complainant’s rights in the KING RANCH mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is King Ranch Saddle Shop, Inc. and King Ranch IP, LLC (“Complainant”), of Kingsville, Texas, USA. Complainant is the owner of the domestic registrations for the marks KING RANCH and KING RANCH SADDLE SHOP, and related marks, which it has continuously used in commerce since at least as early as 1923, in connection with its provision of goods and services in saddlery, tack, and associated leather goods. Complainant has also maintained a web presence for decades, owning domain name registrations since at least as early as 1996, including <king-ranch.com> and <krsaddleshop.com>.
Respondent is GMO Registry, Inc (“Respondent”), of Tokyo, Japan. Respondent’s registrar’s address is also indicated as the same. The Panel notes that the <kingranchsaddle.shop> domain name was registered on or about December 8, 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 has rights in the KING RANCH mark based upon its registration of the mark with the USPTO. Registration with the USPTO has been found to generally establish a complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides copies of its USPTO registrations for the KING RANCH mark (e.g., Reg. No. 2,357,279, registered June 13, 2000). The Panel here finds that Complainant has rights in the KING RANCH mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <kingranchsaddle.shop> domain is confusingly similar to Complainant’s mark because Respondent includes the KING RANCH mark in the domain name and adds a generic term and a gTLD. Such changes are typically insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Avaya Inc. v. Robert Bird, FA 1603045 (Forum Mar. 12, 2015) (“The Panel agrees that the disputed domain names are confusingly similar to the AVAYA mark pursuant to Policy ¶ 4(a)(i) as the added terms are descriptive of and related to Complainant’s offerings, and in the cases of <avaya.help>, and <avayaphone.systems>, the added gTLD adds to the confusion.”). Here, Respondent incorporates the KING RANCH mark in its entirety in the domain name, adds the generic term “saddle,” and adds a “.shop” gTLD. The Panel here finds that Respondent’s <kingranchsaddle.shop> domain name is confusingly similar to Complainant’s KING RANCH mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <kingranchsaddle.shop> domain name because Respondent is not authorized or permitted to use Complainant’s KING RANCH mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes the WHOIS of record identifies Respondent as “GMO Registry, Inc,” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain. The Panel here finds that Respondent lacks rights and legitimate interests in the <kingranchsaddle.shop> domain name under Policy ¶ 4(c)(ii).
Complainant further asserts that Respondent fails to use the <kingranchsaddle.shop> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name for an inactive parking page. Inactive holding may not be considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”); see also Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Here, Complainant claims that the disputed domain name resolves to a parked webpage displaying some text in Japanese. The Panel agrees that Respondent’s use amounts to inactive holding, and finds that Respondent fails to use the <kingranchsaddle.shop> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel may note that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. 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 that Respondent registered and uses the <kingranchsaddle.shop> domain name in bad faith because Respondent inactively holds the disputed domain name. Inactive holding may evince bad faith generally under Policy ¶ 4(a)(iii). See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel again notes that Complainant provides a screenshot of the disputed domain name’s resolving webpage, which is a parked page featuring some limited text in Japanese. The Panel here agrees that Respondent’s use of the domain amounts to inactive holding, and finds that Respondent registered and uses the <kingranchsaddle.shop> domain name in bad faith under Policy ¶ 4(a)(iii).
Next, Complainant claims that Respondent’s registration of a domain name that is confusingly similar to the KING RANCH mark and descriptive of its business indicates Respondent’s bad faith. Registration of a domain name that is descriptive of a complainant’s business may support an inference that a respondent had actual knowledge of a complainant’s rights prior to registering a disputed domain name. See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark.”). Here, Complainant asserts that Respondent targets Complainant’s business because Respondent’s <kingranchsaddle.shop> domain name is identical to the name of Complainant’s retail store, King Ranch Saddle Shop. The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the KING RANCH mark prior to registration and registered the names in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
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 <kingranchsaddle.shop> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 25, 2019
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