For Your Ease Only, Inc. v. Wayne Starkey / DomainsImpossible.com
Claim Number: FA2103001936134
Complainant is For Your Ease Only, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Wayne Starkey / DomainsImpossible.com (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lorigreinerclubhouse.com> and <lorigreinersclubhouse.com>, (‘the Domain Names’) registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 10, 2021; the Forum received payment on March 10, 2021.
On March 11, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lorigreinerclubhouse.com> and <lorigreinersclubhouse.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 March 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2021 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@lorigreinerclubhouse.com, postmaster@lorigreinersclubhouse.com. Also on March 12, 2021, 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 April 7, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 Names be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
Complainant is the owner of the trade mark LORI GREINER which is registered in the USA and has been used since 1996.
The Domain Names registered in 2021 are confusingly similar to the Complainant’s mark containing it in its entirety and simply adding the generic term ‘clubhouse’ (and in the case of <lorigreinersclubhouse.com>, a letter ‘s’) and the gTLD “.com” none of which prevents such confusing similarity.
The Respondent does not have any rights or legitimate interests in the Domain Names, is not commonly known by the Domain Names and is not authorized by the Complainant.
The Domain Names have not been used so there is no bona fide offering of goods or services or legitimate noncommercial fair use.
The Domain Names have not been used. Passive holding of a domain name containing a trade mark with a reputation for no good reason is registration and use in bad faith. The registration of domain names containing the Complainant’s distinctive mark shows actual knowledge of the Complainant and its rights and registration of more than one such domain name constitutes a pattern of activity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the trade mark LORI GREINER which is registered in the USA and has been used since 1996.
The Domain Names registered in 2021 have not been used.
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”).
The Domain Names in this Complaint combine the Complainant’s LORI GREINER mark (registered in the USA for entertainment services and a number of consumer products related to home organisation with first use recorded as 1996), the generic term ‘clubhouse’ and the gTLD “.com”. In the case of <lorigreinersclubhouse.com> an additional letter ‘s’ has been added.
The addition of the generic word ‘clubhouse’ to the Complainant’s mark does not prevent confusing similarity between the Domain Names and the Complainant’s mark which is still recognisable in the Domain Name. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i)).
The gTLD “.com” does not serve to distinguish the Domain Names from the Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
The addition of a letter ‘s’ does not prevent confusing similarity between a domain name and a complainant’s mark. See LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”).
Accordingly, the Panel finds that the Domain Names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint. As such, there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names.
There has been no use of the Domain Names. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4(c)(i)).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register two domain names containing the Complainant’s distinctive mark which has a reputation for entertainment services and consumer products relating to home organisation.
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of a domain name containing a mark with a reputation can be bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
As such, the Panel holds that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lorigreinerclubhouse.com> and <lorigreinersclubhouse.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 8, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page