Tracee Corprew-Hawk v. Eric Wray
Claim Number: FA1911001872260
Complainant is Tracee Corprew-Hawk (“Complainant”), Virginia, USA. Respondent is Eric Wray (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <corprewfuneralhome.com> (“Domain Name”), registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2019; the Forum received payment on November 26, 2019.
On November 21, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <corprewfuneralhome.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 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@corprewfuneralhome.com. Also on December 3, 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 December 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 uses the CORPREW FUNERAL HOME mark in connection with services provided in the funeral business. Complainant has rights in the CORPREW FUNERAL HOME mark through its registration of the mark with the Commonwealth of Virginia State Corporation Commission (e.g. Reg. No. 13174, registered Nov. 7, 2019). Respondent’s <corprewfuneralhome.com> domain name is identical to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <corprewfuneralhome.com> domain name. Respondent is Eric Wray, a proprietor of E. Vaughn Wray Funeral Establishment and a direct competitor of Complainant. Complainant argues Respondent has no legal right to the website or to use the trademark.
Respondent registered and uses the <corprewfuneralhome.com> domain name in bad faith. Respondent is a direct competitor of Complainant and uses the Domain Name to redirect Internet users to Respondent’s own website, at www.evaugnwray.com.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CORPREW FUNERAL HOME mark. The Domain Name is identical to Complainant’s CORPREW FUNERAL HOME mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name 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.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the CORPREW FUNERAL HOME mark through its registration of the mark with the Commonwealth of Virginia State Corporation Commission. The question of whether registration of a mark with a state trademark authority is sufficient to confer rights for the purposes of Policy ¶ 4(a)(i) is an open one with different Panels taking different views. See MadisonFlatFeeHomes.Com. LLC v. Stuart Meland, FA 1724843 (Forum May 13, 2013) (“Registration of a mark with a state authority can sufficiently evince rights in a mark.”). See also PK Information Systems, dba St Pete Software v. Kevin Kurpe, FA1835258 (Forum May 13, 2019) (“Complainant claims trademark rights based on a Florida state trademark registration for ST PETE SOFTWARE. As numerous Panels have held, a state trademark registration is not itself sufficient proof of “rights in a trademark” for purposes of the UDRP because state trademark applications typically are not examined on absolute grounds. In particular, in granting a state trademark registration, the Florida Department of State typically does not consider whether the applied-for term is generic or merely descriptive; rather, the Department of State will typically issue the registration as long as there are no identical registrations on the State registry. See generally Town of Easton Connecticut v. Lightning PC Inc., FA 0808001220202 (Forum Oct. 12, 2008) (explaining that no deference is due to state registrations because they are “usually granted automatically or only after a cursory review for exact matches on the State’s trademark registry.”)”).
The Panel prefers the reasoning in PK Information Systems however it is not necessary to decide this question given the findings below that Complainant holds common law rights in the CORPREW FUNERAL HOME mark for the purposes of Policy ¶ 4(a)(i).
To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
It is apparent from Complainant’s website and the documents annexed to the Complaint that Complainant has operated a funeral home business under the CORPREW FUNERAL HOME mark for over 100 years. The Panel is satisfied that Complainant’s long and continuous use of the CORPREW FUNERAL HOME mark in trade and advertising is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the CORPREW FUNERAL HOME mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that the <corprewfuneralhome.com> domain name is identical to Complainant’s CORPREW FUNERAL HOME mark as it fully incorporates the CORPREW FUNERAL HOME mark, removes the spaces between the words and adds the “.com” gTLD. These changes are insufficient to distinguish the Domain Name from the CORPREW FUNERAL HOME mark under Policy ¶ 4(a)(i). See NAED Education and Research Foundation, Inc. v. Domain Administrator / Marketing Express, FA 1602497 (Forum Mar. 23, 2015) (“The Panel agrees that the disputed domain name is identical to the NAED mark, and that the addition of a gTLD to the mark is not sufficient to rebut a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because the domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the CORPREW FUNERAL HOME mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Eric Wray” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is used to redirect to a website at <www.evaughnway.com>. Respondent Eric Wray operates a competing funeral home business (under the name E. Vaughn Way Funeral Establishment) from this website and physical premises located in the same geographic region as the Complainant. The use of a domain name identical to Complainant’s mark to redirect to a competing website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent registered the Domain Name, October 14, 2019, Respondent had actual knowledge of Complainant’s CORPREW FUNERAL HOME mark. The Complainant and Respondent are direct competitors in the funeral home business in the same geographical region of Virginia, United States. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses the Domain Name to redirect Internet users to Respondent’s own website at <www.evaugnwray.com> where Respondent offers funeral services in direct competition with Complainant. Using a disputed domain name to divert Internet users to a respondent’s competing website can show bad faith registration and use per Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant’s business by diverting Internet users from the complainant’s website to the respondent’s website where it offered competing printer products). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <corprewfuneralhome.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: December 30, 2019
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