JB Livsey Holdings LLC v. Stephen Wagner
Claim Number: FA2103001937444
Complainant is JB Livsey Holdings LLC (“Complainant’), represented by Frederick L. Tolhurst of Dentons, Cohen & Grigsby, P.C., Pennsylvania, USA. Respondent is Stephen Wagner (“Respondent”), represented by Norred Law, PLLC, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rangeramerican.org>, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2021. The Forum received payment on March 22, 2021.
On March 23, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rangeramerican.org> 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 March 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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 firstname.lastname@example.org. Also on March 24, 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.
A timely Response was received and determined to be complete on April 19, 2021.
On April 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant and its predecessor companies provide security systems and monitoring services. Complainant has extensive common law rights in the RANGER AMERICAN word and logo marks through their continuous use by Complainant’s predecessors since 1977 and by Complainant since 2012. Respondent’s <rangeramerican.org> domain name is identical or confusingly similar to Complainant’s word mark.
Respondent lacks rights and legitimate interests in the <rangeramerican.org> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use its RANGER AMERICAN mark. Respondent attempts to pass himself off as Complainant and offers competing services on the disputed domain name’s resolving website. Complainant argues that its use of the RANGER AMERICAN marks since 1977 takes priority over any claimed rights in the marks by Respondent, whose registrations of those marks with the United States Patent and Trademark Office (“USPTO”) resulted in the office cancelling them.
Respondent registered and uses the <rangeramerican.org> domain name in bad faith to disrupt Complainant’s business for commercial gain by attempting to pass himself off as Complainant and offering competing services on the disputed domain name’s resolving website. Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the RANGER AMERICAN mark.
Respondent has rights in the <rangeramerican.org> domain name that are at least equal to Complainant’s rights in the RANGER AMERICAN mark. Respondent has used the RANGER AMERICAN mark in commerce since 2003, when he started as a technician and service provider working with ADT Security Services, Inc., and now uses the domain name in his company providing monitoring and repair services for Complainant’s equipment, as opposed to Complainant’s equipment sales business.
Complainant explicitly cancelled and ceased using the RANGER AMERICAN marks in 2007 and the years following its acquisition and rebranding by the company “Guardian”. Respondent attained numbers of Complainant’s old clients after Complainant had abandoned them. Respondent has continued to use the RANGER AMERICAN name in his business continuously since its inception. Respondent is commonly known by the disputed domain name and uses it for a bona fide offering of goods and services. Respondent notes that the cancellation proceedings over his registrations of the marks with the USPTO determined that Respondent had failed to demonstrate use prior to the applications being filed, but never ruled that Respondent did not have rights in the marks.
Respondent did not register and does not use the <rangeramerican.org> domain name in bad faith, as demonstrated by the above-mentioned facts. Complainant is engaging in reverse domain name hijacking with this proceeding.
Complainant has failed to establish all the elements entitling it to relief.
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.
Respondent does not contest Complainant’s claimed rights in the RANGER AMERICAN word and logo marks, asserting that Respondent has at least equal rights in those marks, an issue that it is outside the scope of this proceeding to determine. For the purposes of this proceeding, the Panel is prepared to accept that Complainant has common law rights in the RANGER AMERICAN word and logo marks.
The Panel finds Respondent’s <rangeramerican.org> domain name to be identical to Complainant’s RANGER AMERICAN word mark as it incorporates that mark in its entirety and adds the inconsequential “.org” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <rangeramerican.org> domain name was registered on Jan. 11, 2009. It resolves to a website displaying the RANGER AMERICAN word and logo marks and offering alarm system monitoring, support and repair services for Ranger American brand security systems.
According to the evidence presented to the USPTO in the 2017 cancellation proceedings mentioned below, for some years prior to 2008, W.B.E of Texas Ltd. d/b/a/ Ranger American of Texas, one of Complainant’s predecessors, handled installation and sales of home security components and sold contracts for monitoring services to homeowners. It arranged for ADT Security Services, Inc., to provide those monitoring services to homeowners from a remote facility. Respondent worked for ADT Security Services, Inc. from 2003 as an alarm monitoring technician.
In 2008 W.B.E. of Texas, Ltd. was acquired by Guardian Protection Services Texas, which provided its own monitoring services under the Guardian Protection Services name, terminated the arrangement with ADT Security Services, Inc., and formally abandoned the name Ranger American of Texas.
In 2012 Guardian Protection Services Texas sold its assets in Dallas/Fort Worth to Complainant, JB Livsey Holdings LLC, d.b.a. Ranger Technology Solutions.
Respondent says he observed the abandonment of the RANGER AMERICAN marks in 2008 when the Guardian purchase occurred and, noticing the vacuum in the market to service RANGER AMERICAN equipment and monitoring, registered the <rangeramerican.org> domain name on Jan. 11, 2009. This was almost two years after the cancellation of W.B.E. of Texas, Ltd.’s registered RANGER AMERICAN word and logo marks.
In April 2014, Respondent applied to the USPTO to register the identical RANGER AMERICAN word and logo marks for monitoring of security systems. These were registered in November, 2014 and, upon the application of Complainant made in 2017, were cancelled by the USPTO in 2020 on the sole ground that Respondent had not shown that the marks had been used prior to filing the applications.
Respondent says he used the RANGER AMERICAN word and logo marks and the <rangeramerican.org> domain name in 2009 to sell alarm monitoring services without objection from any party until Complainant filed its cancellation applications in 2017. Respondent has shown that he used the email address “email@example.com” in 2009 for this purpose and that he trades through a company which he incorporated in Texas in 2014 named Ranger American, Inc.
Respondent says that even though he does not have registered trademarks, he is commonly known by the disputed domain name and uses it to provide monitoring, tech support and repair services for customers with Ranger American alarm systems who were abandoned by Complainant and its predecessors.
The Panel is not persuaded that Complainant or its predecessors abandoned customers with Ranger American alarm systems. However, it is clear that, after the 2007 cancellation of W.B.E. of Texas, Ltd.’s registered RANGER AMERICAN word and logo marks, the 2008 acquisition of that company by Guardian Protection Services, the termination of the arrangement for ADT Security Services, Inc. to provide monitoring services to W.B.E. of Texas, Ltd. and the abandonment of the name Ranger American of Texas, Respondent chose the name Ranger American and registered the <rangeramerican.org> domain name in 2009 in order to compete with Guardian Protection Services in the provision of monitoring services to existing homeowners with installed Ranger American security systems.
The critical question is whether Respondent chose this course in order to masquerade as Complainant or one of its predecessors or whether he did so in order simply to compete with them in the provision of monitoring services to existing users of Ranger American security systems.
The Panel considers that Respondent registered the <rangeramerican.org> domain name in 2009 and has since then used it to provide bona fide monitoring services to existing users of Ranger American security systems who would be familiar with the Ranger American name. Further, that Respondent did so knowing that Complainant’s predecessor, Guardian Protection Services, had abandoned the name Ranger American of Texas and was going through a process of rebranding as Guardian. Accordingly, the Panel does not consider that Respondent has attempted to masquerade as Complainant or one of its predecessors.
Further, having carried on business through the company Ranger American, Inc. and used the email address “firstname.lastname@example.org” in his business, Respondent has shown that he is commonly known by the <rangeramerican.org> domain name.
Accordingly, the Panel finds that Respondent has shown that he has rights and legitimate interests in the <rangeramerican.org> domain name pursuant to paragraph 4(c)(i) and (ii) of the Policy.
Complainant has failed to establish this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
In light of the facts and the Panel’s findings set out in relation to the second element, the Panel finds that none of the circumstances in Paragraph 4(b) of the Policy applies. Although Respondent was aware when he registered the <rangeramerican.org> domain name of the previous use by Complainant’s predecessors of the RANGER AMERICAN word and logo marks and of their registration and cancellation, and of the abandonment of the Ranger American of Texas name, Respondent has not sought to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant’s trademarks. See the WIPO Jurisprudential Overview 3.0, paragraph 3.1.
Accordingly, the Panel finds that the <rangeramerican.org> domain name was not registered and is not being used in bad faith.
Complainant has failed to establish this element.
Reverse domain name hijacking
Paragraph 15(e) of the Rules provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking (RDNH) is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking; rather, as stated in the WIPO Jurisprudential Overview 3.0, paragraph 4.16:
“Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights…”
Here it cannot be said that Complainant must have known it could not succeed as to any of the required elements. The Panel declines to make a finding of RDNH.
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 <rangeramerican.org> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: May 3, 2021
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