Sinclair Finance Company v. Dallas Kranker
Claim Number: FA1906001849696
Complainant is Sinclair Finance Company (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is Dallas Kranker (“Respondent”), represented by Wade Kerrigan of Husch Blackwell LLP, Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dinopay.com> registered with 1&1 IONOS SE.
The undersigned certifies 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.
Carol Stoner Esq., Chair, Terry Peppard, Esq., and Darryl Wilson, Esq., as Panelists.
Complainant submitted a Complaint to the Forum electronically on June 25, 2019; the Forum received payment on June 25, 2019.
On Jun 26, 2019, 1&1 IONOS SE confirmed by e-mail to the Forum that the <dinopay.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 June 27, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@dinopay.com. Also on June 27, 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.
A timely Response was received and determined to be complete on July 22, 2019.
On July 30, 2019, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Carol Stoner Esq., Chair, Terry Peppard, Esq., and Darryl Wilson, Esq., as Panelists.
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 <dinopay.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant, Sinclair, is one of the largest independently owned oil companies in the United States. Complainant has rights in the DINO and DINOPAY marks through its registration of the marks with the United States Patent and Trademark Office (“USTPO”) (e.g., DINO – Reg. No. 779,741, registered on November 10, 1964) and (e.g., DINOPAY - Reg. No. 5,302,154, registered on October 3, 2017). See Compl. Annex. B. Respondent’s <dinopay.com> domain name is confusingly similar to the DINO mark because it incorporates the mark in its entirety, adding only the word “pay” and a “.com” generic top-level domain. Alternatively, Respondent’s <dinopay.com> domain name is identical to Complainant’s DINOPAY mark because it incorporates the mark in its entirety and adds only a “.com” gTLD.
Respondent lacks rights and legitimate interests in the <dinopay.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Further, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to purportedly provide a fuel payment app that is directly competitive with Complainant’s own fuel pay app. Further, Respondent attempts to pass itself off as Complainant.
Respondent registered and uses the <dinopay.com> domain name in bad faith because Respondent offers the disputed domain name for sale. Respondent attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion as to the affiliation of the disputed domain name. Finally, Respondent uses the disputed domain name to offer a fake fuel payment app.
B. Respondent
Respondent has rights in the <dinopay.com> domain name because Respondent registered the disputed domain name seven years before Complainant filed its trademark registration for the DINOPAY mark. Further, Complainant’s DINO marks are not used in connection with a fuel payment app. The term “dino” is inherently descriptive and is commonly known to mean oil, gas, or fuel.
Respondent has rights and legitimate interests in the <dinopay.com> domain name as Respondent has continuously used the domain name since October 24, 2008. See Respond. Annexes A and C. Respondent uses and/or has demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. Respondent has spent considerable time and resources to developing a fuel payment app. Respondent does not attempt to indicate any affiliation with Complainant as Respondent uses the term “dino” descriptively and makes no mention of Complainant’s company.
Respondent has not registered or used the <dinopay.com> domain name in bad faith. Respondent’s offer to sell the disputed domain name does not constitute bad faith as Respondent has incurred significant financial costs in connection with the disputed domain name. Complainant also had no DINOPAY mark at the time that Respondent registered the disputed domain name. Further, the disputed domain name is not being used in bad faith as it is descriptive of the goods that Respondent offers. Finally, the disputed domain name is used in connection with a developing project and is not a “sham” site.
(1) the domain name <dinopay.com> registered by Respondent is not identical or confusingly similar to a trademark or service mark in which Complainant’s rights preceded those of Respondent; and
(2) Respondent has rights or legitimate interests in respect of the domain name <dinopay.com>; and
(3) the domain name <dinopay.com> has not been registered and used in bad faith.
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 has not established rights in the DINOPAY marks because Respondent registered the disputed domain name before Complainant registered the DINOPAY mark. Respondent’s registration of the disputed domain name prior to the complainant’s registration of a trademark is compelling evidence that the complainant has failed to establish rights in the mark. See Twin Lakes Telephone Cooperative Corporation v. DNS ADMIN / BEST WEB LIMITED, FA 1725012 (Forum May 23, 2017) (concluding that complainant failed to establish rights in the TWIN LAKES COMMUNICATION marks for purposes of the policy, because registration of respondent’s domain name predated registration of complainant’s mark by approximately five years). Here, Respondent proves that the disputed domain name was registered on October 24, 2008 and that Respondent has continuously owned the disputed domain name since this date. See Compl. Annexes A and C. Complainant’s trademark application for the DINOPAY mark was registered on December 9, 2015, which was seven years after Respondent registered the disputed domain name. See Compl. Annex. B. Therefore, the Panel concludes that Respondent’s <dinopay.com> domain name predates Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s argument that the term “dino” is a descriptive word that is commonly known to mean oil, gas, or fuel is supported by Respond. Annex B. A mark comprised entirely of generic or descriptive words fails to be confusingly similar to a disputed domain name for the purposes of Policy ¶ 4(a)(i). See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Forum Feb. 13, 2001) (finding that the complainant has not satisfied Policy ¶ 4(a)(i) as its mark consists of generic terms that are not entirely associated with the complainant’s offering of services). Here, the term “dino” is commonly used to mean oil, gas, or fuel in connection with Respondent’s fuel payment app. Respondent provides a screenshot of an article that defines dino as “short for dinosaurs or other carbon rich material.” See Respond. Annex B. Therefore, the Panel finds that the mark is comprised of generic or descriptive words and is not confusingly similar under Policy ¶ 4(a)(i).
In its decision making process, the Panel also found it noteworthy that Complainant had provided no argument and no evidence to support a contention of secondary meaning in the mark “dino” accruing between the years of its trademark registration in 1964 and prior to Respondent’s registration of domain name in 2008. Substantial credible evidence of secondary meaning and dominance of the initial term “dino” may have pre-empted the import of Respondent’s claims of prior registration.
The Panel holds 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 has provided in its Response, plausible explanations for the origin, development and use of its fuel payment app <dinopay.com> Respondent described the origin of his fuel app as a response to the cumbersome and burdensome methodology of paying multiple gas suppliers, said idea generated by his tenure as a school network administrator whereby the facility had a fleet to maintain. Respondent credibly averred that he had been developing a fuel payment app for the past 11 years. Respondent also provided a plausible rationale of personal financial considerations, as barring him from the completion and marketing of his invention of an internet fuel app.
Actual use or preparation to use a disputed domain name can be a bona fide offering of goods and services. See Sony Pictures Television Inc. v Thomas, Jeff, FA 1625643 (Forum Aug. 6, 2015) (holding that “Respondent has provided evidence of his plans to use the disputed domain name and, despite Complainant’s arguments to the contrary, Respondent can take his time so long as there is no indication of bad faith.”). Here, Respondent provides receipts of payments made to maintain the disputed domain name as well as receipts for the cost of web development. See Respond Annexes C and D. Therefore, this Panel finds that Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services for the purposes of Policy ¶ 4(c)(i).
The Panel has reviewed no convincing evidence that Respondent attempted to imply an affiliation with Complainant. Rather, Respondent used the term “dino” to describe the services that Respondent offers. Using a disputed domain name that corresponds with products offered may be a bona fide offering of goods and services for the purposes of Policy ¶ 4(c)(i). See 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.”). Here, Respondent takes advantage of the descriptive word “dino” as it is used in connection with oil or gas, in order to promote its fuel payment system. Therefore, this Panel finds that Respondent uses the disputed domain name in connection with a bona fide offering of goods and services for the purposes of Policy ¶ 4(c)(i).
This Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
As Respondent’s registration of the <dinopay.com> domain name predates Complainant’s first claimed rights in the DINO and DINOPAY marks, this Panel rules that Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of both bad faith registration and bad faith use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
As this Panel concludes that Respondent has rights or legitimate interests in the <dinopay.com> domain name pursuant to Policy ¶ 4(a)(ii), this Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
Respondent’s offer to sell the disputed domain name does not constitute bad faith as Respondent has incurred significant financial cost in connection with the disputed domain name. Simply offering a disputed domain name for sale does not, in itself, evidence bad faith. See LifePlan v. Life Plan, FA 94826 (Forum July 13, 2000) (“[T]he mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling, renting, or transferring the domain name to the Complainant as required under [Policy ¶ 4(b)(i)].”). Here, Respondent provides receipts of payments made to maintain the disputed domain name as well as receipts for the cost of web development. See Respond Annexes C and D. As the Panel finds this evidence to be sufficient, the Panel finds that Respondent did not act in bad faith under Policy ¶ 4(b)(i).
Complainant has not propounded, as is required by the Policy, any compelling evidence that Respondent registered the <dinopay.com> domain name in bad faith. Rather, Complainant’s registration of the DINOPAY mark was some seven years subsequent to the registration of the disputed domain name. The registration of a disputed domain name prior to a complainant’s use of a mark, cannot evidence bad faith on the part of the registrant. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark). Therefore, this Panel finds that Respondent did not register the <dinopay.com> domain name in bad faith under Policy ¶ 4(a)(iii).
As the Respondent has offered sufficient evidence as to the descriptive nature of the “dino” mark, Panel rules that the <dinopay.com> domain name is not being used in bad faith. Using a disputed domain name that contains generic or descriptive words that relate to a respondent’s business does not constitute bad faith under Policy ¶ 4(a)(iii). See Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Forum Mar. 1, 2007) (“A respondent does not register or use a disputed domain name in bad faith if the terms of a complainant’s mark are of common usage and the respondent operates a business that could reasonably be marketed under the disputed domain name”). Here, Respondent evidences that the term “dino” is commonly used to mean oil, gas, or fuel through a screenshot of an article that defines “dino” as “short for dinosaurs or other carbon rich material” and is being used in connection with Respondent’s fuel payment app. See Respond. Annex B. Accordingly, this Panel finds that Respondent did not register or use the <dinopay.com> domain name in bad faith under Policy ¶ 4(a)(iii).
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 <dinopay.com> domain name REMAIN WITH Respondent.
Carol Stoner Esq., Chair
Dated: August 13, 2019
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