My Bar Study LLC v. Domain Administrator / Domain Is For Sale At Www.Dan.Com ----
Claim Number: FA2109001963037
Complainant is My Bar Study LLC (“Complainant”), represented by David Lalazarian, California, USA. Respondent is Domain Administrator / Domain Is For Sale At Www.Dan.Com ---- (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yourbarstudy.com>, registered with Dynadot, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 9, 2021; the Forum received payment on September 9, 2021.
On September 13, 2021, Dynadot, Llc confirmed by e-mail to the Forum that the <yourbarstudy.com> domain name is registered with Dynadot, Llc and that Respondent is the current registrant of the name. Dynadot, Llc has verified that Respondent is bound by the Dynadot, 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 September 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@yourbarstudy.com. Also on September 14, 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 October 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, My Bar Study LLC, offers educational services in the field of legal education and bar exam preparation. Complainant has rights in the MY BAR STUDY and YOUR BAR STUDY marks based upon use of the mark in commerce. Respondent’s <yourbarstudy.com> domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s YOUR BAR STUDY mark in its entirety and a significant portion of Complainant’s MY BAR STUDY mark, adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <yourbarstudy.com> domain name. Complainant has not licensed or authorized Respondent to use the MY BAR STUDY and YOUR BAR STUDY marks. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent attempts to resell the domain name instead of putting it into actual use.
Respondent registered and uses the <yourbarstudy.com> domain name in bad faith because Respondent is offering to sell or lease the rights to the disputed domain name for the inflated price of $990. Respondent also displays opportunistic bad faith per Policy ¶ 4(a)(iii) by registering the domain name shortly after the Complainant’s USPTO application became public.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that offers educational services in the field of legal education and bar exam preparation.
2. Complainant has established its common law trademark rights in the MY BAR STUDY and YOUR BAR STUDY marks based upon use of the marks in commerce.
3. Respondent registered the <yourbarstudy.com> domain name on June 11, 2021.
4. Respondent has been attempting to resell the domain name instead of putting it to an actual legitimate use.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. The Complainant is unable to say that it has a registered trademark which is the usual way of establishing standing to bring the proceeding. However, a complainant may show that it has unregistered or common law trademark rights in the mark on which it relies. While Complainant does not specifically assert common law rights in the MY BAR STUDY and YOUR BAR STUDY marks, the Panel finds that Complainant’s evidence nonetheless establishes common law rights. Under Policy ¶ 4(a)(i), a complainant is not required to own a registered trademark prior to the registration of the disputed domain name if the complainant can establish common law rights in the mark. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Furthermore, a complainant may not specifically argue common law rights, yet provides sufficient evidence for an inference of secondary meaning within the mark. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA 1763598 (Forum Jan. 22, 2018) (“While Complainant does not specifically argue that it has common law trademark rights in FIND YOUR BALANCE, the Panel finds Complainant’s evidence infers that the Complainant has acquired secondary meaning within the FIND YOUR BALANCE mark.”). Therefore, the Panel agrees that Complainant need not provide evidence of trademark registration nor explicitly argue common law rights to show rights in the MY BAR STUDY and YOUR BAR STUDY marks.
Complainant may claim common law rights in the MY BAR STUDY and YOUR BAR STUDY marks based on its use of the mark in connection with its advertisement and sales of bar exam related study materials. Common law rights in a mark may be established through evidence that the mark has acquired a secondary meaning. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as Mar. 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.); see also Palm Desert Nat’l Bank, N.A. v. Manila Indus., Inc., FA 843468 (Forum Jan. 17, 2007) (“Complainant’s . . . registrations for the <palmdesertnationalbank.net> and <palmdesertnationalbank.org> domain names serve as further evidence of Complainant’s rights in the mark.”); see additionally Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark). Complainant provides evidence that the MY BAR STUDY and YOUR BAR STUDY marks have acquired a secondary meaning in connection with Complainant’s use of the mark in the field of legal education and bar exam preparation. Complainant’s promotion of its services and products on the World Wide Web and non-internet based marketing efforts; Complainant’s ownership of the <mybarstudy.com> domain name, where it hosts a website that sells bar exam study schedules; Complainant’s filing for trademark registration with the United States Patent and Trademark Office (“USPTO”) for both the MY BAR STUDY and YOUR BAR STUDY marks are evidence to that effect. See Compl. Exs. A & B; see also Declaration of David Lalazarian (Manager). Thus, the Panel finds that Complainant has sufficiently established common law rights in the MY BAR STUDY and YOUR BAR STUDY marks. The Panel is also satisfied that Complainant acquired its common law trademark rights to the MY BAR STUDY and YOUR BAR STUDY marks prior to the date on which Respondent registered the disputed domain name. Indeed, it is clear that Respondent registered the disputed domain name because it knew that Complainant had applied to register its trademarks with the USPTO.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MY BAR STUDY and YOUR BAR STUDY marks. Complainant argues that Respondent’s <yourbarstudy.com> domain name is confusingly similar to Complainant’s MY BAR STUDY and YOUR BAR STUDY marks because it incorporates Complainant’s YOUR BAR STUDY mark in its entirety and a significant portion of Complainant’s MY BAR STUDY mark, adding the gTLD “.com.” When a disputed domain name incorporates a complainant’s mark in its entirety and adds a gTLD, the domain name is rendered identical to the mark. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); see also Cards Against Humanity, LLC v. sri winarti, FA 1736823 (Forum July 31, 2017) (“The Panel therefore finds Respondent’s <cardsagainsthumanity.us> to be identical to Complainant’s CARDS AGAINST HUMANITY mark.”). Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MY BAR STUDY and YOUR BAR STUDY trademarks and to use them in its domain name;
(b) Respondent registered the <yourbarstudy.com> domain name on June 11, 2021;
(c) Respondent has been attempting to resell the domain name instead of putting it an actual legitimate use;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Although Complainant does not argue this, the Panel finds that Respondent does not have rights or legitimate interests in the <yourbarstudy.com> domain name because Respondent is not commonly known by the disputed domain name. In addition, Complainant does argue that it has not licensed or authorized Respondent to use the MY BAR STUDY and YOUR BAR STUDY marks. Under Policy ¶ 4(c)(ii), when no response is submitted, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a mark is further evidence that a respondent is not commonly known by the mark. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Here, the WHOIS information identifies “Domain Administrator / Domain Is For Sale At WWW.DAN.COM” as the registrant of the domain name. See Registrar Verification Email. Additionally, Complainant submits that it has not licensed or authorized Respondent to use the MY BAR STUDY and YOUR BAR STUDY marks. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent attempts to resell the domain name instead of putting it into actual use. Offering the domain name for sale or lease does not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”); see also Altria Group, Inc. v. Stacey Scott / Baldwin Inc, FA1410001584163 (Forum Nov. 12, 2014) (finding that the respondent’s only use of the resolving website was to advertise the sale of the associated domain name indicated that the respondent lacked rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)); see additionally Deutsche Lufthansa AG v. Future Media Architects, Inc., FA 1153492 (Forum Apr. 17, 2008) (“The Panel finds that an offer to rent or lease the <lh.com> domain name supports findings of a lack of rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”). Here, Complainant provides a screenshot of Respondent’s website, where Respondent offers the domain name for sale for $990 or lease for $330. See Compl. Ex. C. Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <yourbarstudy.com> domain name in bad faith because Respondent is offering to sell or lease the rights to the disputed domain name for the inflated price of $990. Under Policy ¶ 4(b)(i), bad faith has been found where a respondent makes a general offer for sale of the domain name on the website for an excessive price, where a respondent has a “for sale” message on its WHOIS registration information, or where a respondent offers to rent the domain name. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”); see also loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i). ”); see additionally Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the respondent’s WHOIS registration information contained the words, “This is [sic] domain name is for sale”); see additionally Wake Forest Univ. v. Needham, FA 125751 (Forum Nov. 27, 2002) (finding bad faith pursuant to Policy ¶ 4(b)(i) where the panel found the respondent had proposed rental fees for use of the domain names in dispute). The Panel recalls that Complainant provides a screenshot of Respondent’s website, where Respondent offers the domain name for sale for $990 or lease for $330. See Compl. Ex. C. The Panel therefore finds bad faith under Policy ¶ 4(b)(i).
Secondly, although Complainant includes this argument under its Policy ¶ 4(a)(ii) analysis, the Panel finds for Complainant that Respondent displays opportunistic bad faith per Policy ¶ 4(a)(iii). Under Policy ¶ 4(a)(iii), a respondent has engaged in opportunistic bad faith where the respondent registered the domain name shortly after the complainant’s USPTO application became public. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). Here, Complainant submits that Respondent discovered Complainant’s public trademark application with the USPTO and registered the disputed domain name to make a quick profit. Complainant points out that Respondent’s registered for the <yourbarstudy.com> disputed domain name on June 11, 2021—three days after Complainant filed the USPTO application for its YOUR BAR STUDY mark. See Compl. Exs. A & D. Thus, as the Panel agrees with Complainant, the Panel may find opportunistic bad faith per Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MY BAR STUDY and YOUR BAR STUDY trademarks and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yourbarstudy.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 8, 2021
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