Terra 4, LLC v. Tracy Benson
Claim Number: FA2109001965089
Complainant is Terra 4, LLC (“Complainant”), represented by Staci R. DeRegnaucourt of Varnum LLP, Michigan, USA. Respondent is Tracy Benson (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gobealive.com> and <bealivestudios.com>, registered with GoDaddy.com, LLC.
PANEL
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 September 24, 2021.The Forum received payment on September 24, 2021.
On September 27, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gobealive.com> and <bealivestudios.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 September 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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 postmaster@gobealive.com, postmaster@bealivestudios.com. Also on September 29, 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 25, 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. 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
Complainant has rights in the BE ALIVE mark based upon registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <gobealive.com> and <bealivestudios.com> domain names are confusingly similar to Complainant’s BE ALIVE mark.
Respondent registered the <gobealive.com> domain name at the request of Complainant, while employed by Complainant and its related entity Be Alive Inc. Respondent was instructed to register the <gobealive.com> domain name in the name of Complainant but did so in her own name, using a privacy service.
Respondent registered the <bealivestudios.com> domain name soon after her employment ceased, also using a privacy service, with the intent of leveraging it against Complainant for personal and/or financial gain.
Respondent does not have rights or legitimate interests in the <gobealive.com> and <bealivestudios.com> domain names because Respondent is not commonly known by the domain names and fails to use them in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent hosts parked hyperlinks at the <bealivestudios.com> domain and registered the <gobealive.com> domain name for use as Complainant’s website while employed by Complainant.
Respondent registered the <gobealive.com> and <bealivestudios.com> domain names in bad faith with actual knowledge of Complainant’s rights in the BE ALIVE mark and is using them to disrupt Complainant’s business by holding Complainant’s “www.gobealive.com” webpage hostage. This has rendered Complainant and its related entity Be Alive, Inc. unable to conduct business, transfer servers, support its business webpage, or launch its online business or webstore under the <gobealive.com> and <bealivestudios.com> domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established 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.
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 has shown that it has rights in the BE ALIVE mark based upon registrations with the USPTO (e.g., Reg. No. 4,868,179, registered Dec. 8, 2015). The Panel finds Respondent’s <gobealive.com> and <bealivestudios.com> domain names to be confusingly similar to Complainant’s BE ALIVE mark since they reproduce the mark, merely adding “go” or “studios”, which do not distinguish the domain names from the mark, and the inconsequential “.com” generic top-level domain, which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names 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 names, 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 names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <gobealive.com> domain name was registered by Respondent in her own name, using a privacy service, on January 5, 2018, two years after registration of Complainant’s BE ALIVE mark and while Respondent was employed by Complainant between March 14, 2017 and February 22, 2019. Respondent has not denied Complainant’s assertion that she was requested to register the <gobealive.com> domain name for Complainant and was instructed to do so in the name of Complainant. It resolves to Complainant’s website but remains under the control of Respondent.
The <bealivestudios.com> domain name was registered by Respondent on March 6, 2019, less than 2 weeks after the effective date of her resignation from Complainant’s employment. It resolves to a parked website with hyperlinks to “sponsored listings”, some of which are similar to Complainant’s goods and services.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that she does have rights or legitimate interests in the <gobealive.com> and <bealivestudios.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Paragraph 4(b) of the Policy sets out some circumstances which shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. As noted in the WIPO Jurisprudential Overview 3.0, Section 3.1, those circumstances are not exclusive and a complainant may demonstrate bad faith under paragraph 4(a)(iii) by showing that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark.
In the absence of any response, the Panel finds that, as an employee of Complainant, Respondent was fully aware of Complainant’s BE ALIVE mark when registering the <gobealive.com> domain name and that, in choosing to do so in her own name, concealed by a privacy service, contrary to Complainant’s instructions to register it in Complainant’s name, Respondent registered the <gobealive.com> domain name in bad faith. Following cessation of her employment by Complainant, Respondent’s registration of the <bealivestudios.com> domain name was also in bad faith.
The Panel also finds that Respondent is using the <gobealive.com> domain name in bad faith to prevent Complainant from operating its own website and is using the <bealivestudios.com> domain name in bad faith to prevent Complainant from reflecting its BE ALIVE mark in a corresponding domain name and to divert Internet traffic from Complainant to “sponsored listings” for financial gain.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gobealive.com> and <bealivestudios.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: October 26, 2021
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