Wendi Weiner v. Charles Euchner
Claim Number: FA2104001940321
Complainant is Wendi Weiner (“Complainant”), represented by Darren Heitner of HEITNER LEGAL, P.L.L.C, Florida, USA. Respondent is Charles Euchner (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thewritingguru.com>, (the “Domain Name”) 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.
Clive L Elliott Q.C., as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2021; the Forum received payment on April 5, 2021.
On April 6, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the 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 April 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 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@thewritingguru.com. Also on April 9, 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 29, 2021.
On May 4, 2021, pursuant to Respondent’s request to have the dispute decided by a single-member Panel, the Forum appointed Clive L Elliott Q.C., 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.
A. Complainant
Complainant states that she is the founder of The Writing Guru, LLC and the owner of the website (www.writingguru.net). She is also the owner of the registered trade mark THE WRITING GURU (“Complainant’s Mark”) under United States Patent and Trademark Office (“USPTO”), registration no. 5131586 on January 31, 2017.
Complainant states that Complainant’s Mark is used as a brand identifier for the promotion of various goods and services, including career services, as well as resume writing, editing and other editorial services.
Complainant contends that she has developed goodwill and a strong association with Complainant’s Mark amongst the consuming public and has a statutory and common legal interest in the mark.
Complainant asserts that the Domain Name is identical to Complainant’s Mark in its entirety as well as Complainant’s website which she uses to promote Complainant’s services.
Complainant states that although Respondent registered the Domain Name on May 22, 2006, Respondent is not using the Domain Name for any commercial purposes.
Complainant goes on to assert that Respondent is not a licensee of Complainant, nor is Respondent otherwise authorized to use Complainant’s Mark for any purpose. Respondent is not commonly known as or associated with the Domain Name and does not use the mark to advertise or promote goods and services in commerce. Therefore, Complainant submits, Respondent has not established rights or legitimate interests in the Domain Name.
Complainant claims that Respondent does not use the Domain Name in connection with a bona fide offering of goods or services in commerce, but only as an electronic brochure/resume.
Complainant goes on to claim that due to Respondent’s continued use of the Domain Name it has created confusion between Respondent’s services and Complainant’s services, such confusion causing consumers to believe Complainant and Respondent are affiliated, which constitutes bad faith registration and use of the Domain Name.
Complainant also advises that Respondent is refusing to transfer the Domain Name to Complainant unless Complainant pays an exorbitant fee to obtain the Domain Name.
B. Respondent
Respondent contends that Complainant has brought this action in bad faith. Respondent argues that Complainant applied for Complainant’s Mark 11 years after Respondent registered the Domain Name and began using it in his business. Respondent therefore requests a finding of reverse domain hijacking be found based on the false and unsubstantiated allegations of Complainant.
Respondent asserts that he has had a long career as a writer, teacher, consultant and coach (“guru”). He began his teaching career in higher education in the 1980s and has published over a dozen books. Respondent says he has also coached many authors, including former ambassadors, historians, academics, journalists, urban planners, as well as authors seeking to complete difficult and challenging manuscripts. Respondent has taught at the university level for many years, including teaching non-fiction narrative writing at Yale University and Columbia University.
Respondent states that he purchased the Domain Name from GoDaddy Auctions on May 22, 2006, nearly 15 years ago, long before Complainant started her business. Respondent indicates that he has renewed the Domain Name every year and has created a website using the domain name and has used it in his business. Respondent asserts that his use of the Domain Name is appropriate to describe his writing consulting services and that his website is robust and describes accurately his services, processes and fees. It is an active and valuable asset for his work and he denies Complainant’s allegations that it is not used for any commercial purposes.
Respondent claims that Complainant obtained her service mark protection in 2017 for services different than those provided by Respondent. The two parties offer different services that cannot be confused; Complainant offering career placement or resume writing, and Respondent offering book coaching, writing and editorial services. Respondent contends that he purchased the Domain Name and began offering his commercial services more than a full decade before Complainant obtained a service mark for career placement services.
Respondent submits that he used his Domain Name and website in good faith for a legitimate business. He denies allegations that he is drawing business from Complainant and has never cybersquatted or used ownership of the Domain Name for resale purposes or any other improper purpose.
Respondent also refutes allegations of confusion. Respondent also denies allegations about refusing to transfer the Domain Name in order to induce Complainant into paying an exorbitant fee. Complainant contacted Respondent on January 12, 2016 expressing concern about potential confusion of Respondent’s use of the name, to which Respondent replied explaining the two logos and brandings were different and there was no problem. Complainant’s lawyers then sent a cease-and-desist demand on February 2, 2021, some five years later.
Respondent states he has had a legitimate right in the Domain Name since 2006 and Complainant has tried to bully and intimidate him to forfeit his legitimate property thereby causing unnecessary stress.
For the reasons set out below relief is denied. Further, it is found that reverse domain name hijacking has occurred.
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 asserts rights in Complainant’s Mark, based on registration of the mark with the USPTO (e.g., Reg. No. 5,131,586, registered Jan. 31, 2017). Registration of a mark with the USPTO is a valid showing of rights in a mark.
Complainant argues that the Domain Name is confusingly similar or identical to Complainant’s Mark as it exactly reproduces Complainant’s Mark. Apart from the generic top-level domain “.com” the Domain Name is identical to Complainant’s Mark.
Accordingly, the Panel finds that the Domain Name is identical to Complainant’s Mark under Policy ¶ 4(a)(i).
Having considered the parties submissions and the evidence, the Panel’s view is that notwithstanding the fact that Complainant has rights in Complainant’s Mark, that she has not established a prima facie case in support of her argument that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
Respondent puts forward a plausible argument that he has rights and legitimate interests in the Domain Name, because Respondent uses the domain for a bona fide offering of goods or services or legitimate noncommercial or fair use. That is, that Respondent uses the Domain Name to promote his writing, coaching, and editorial services, and to provide information about his professional skills and experience in connection to writing.
A party who has used a domain name for actual business purposes and those purposes correspond with the domain name, then that party may be able to establish legitimate rights and interests in the disputed domain name. See Modern Props, Inc. v. Wallis, FA 152458 (Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name).
In the present case, Respondent asserts that he uses the Domain Name to advertise his writing coaching services and the domain has been used in conjunction with his other websites detailing his writing services and books, online writing courses, and other business services. That assertion appears to be plausible. In the absence of any evidence or argument refuting such assertion the Panel infers that Respondent uses the Domain Name for a bona fide offering of goods or services under Policy ¶ 4(c)(i).
Additionally, and importantly in the Panel’s view, the Domain Name was registered well prior to Complainant’s rights in Complainant’s Mark. Here, Respondent registered the Domain Name in 2006 and asserts that he has consistently used the Domain Name to market his services; whereas Complainant’s Mark was registered on January 31, 2017. Given this, Complainant fails to meet her burden of proof showing Respondent lacked rights and legitimate interests in the Domain Name.
Accordingly, Complainant has failed to establish Respondent lacks rights or legitimate interests in the Domain Name.
Given Respondent’s registration of the Domain Name significantly predates Complainant’s first claimed rights in Complainant’s Mark the Panel concludes that the registration of the Domain Name was not made in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum June 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.”). On that basis, the Panel concludes that Respondent did not register or use the Domain Name in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent argues that the Domain Name was registered in good faith because Respondent did not and could not have had knowledge of Complainant’s rights in Complainant’s Mark when registering the Domain Name 15 years ago prior to Complainant’s registration of the mark. This argument has obvious merit.
Accordingly, the Panel declines to find bad faith per Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the Domain Name, of his rights to use the Domain Name. Respondent raises two issues. First, that Complainant contacted Respondent about transferring the Domain Name in 2016 and then failed to make contact for another five years. Secondly, that Complainant then attempted to coerce Respondent into forfeiting the Domain Name through bullying and intimidation.
It is reasonable to infer that Complainant knew or should have known that she was unable to prove that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and is using the Domain Name in bad faith. The Panel considers that there is sufficient evidence to this effect, and accordingly that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”).
Under the circumstances the Panel is satisfied that Complainant knew that Respondent had registered and used the Domain Name well before she had, but nevertheless attempted to prevent him from using the Domain Name as he had previously done, and in doing so and bringing this complaint engaged in reverse domain name hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
___________________________________________________________
Clive L Elliott Q.C., Panelist
Dated: May 20, 2021
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