Rieth-Riley Construction Co., Inc. v. Stephen Sutherland
Claim Number: FA2110001967532
Complainant is Rieth-Riley Construction Co., Inc. (“Complainant”), represented by Kathleen S. Fennessy of Barnes & Thornburg LLP, Indiana, USA. Respondent is Stephen Sutherland (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kassonsandandgravel.com>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2021; the Forum received payment on October 4, 2021.
On October 5, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kassonsandandgravel.com> 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 October 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@kassonsandandgravel.com. Also on October 8, 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 November 2, 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 does business in the provision and sale of sand, gravel, and stone products. Complainant has common law rights in the KASSON SAND AND GRAVEL mark through its long standing use of the mark in commerce. Respondent’s <kassonsandandgravel.com> domain name is confusingly similar to Complainant’s mark. Respondent incorporates the mark in its entirety and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <kassonsandandgravel.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the KASSON SAND AND GRAVEL mark in any way. Respondent fraudulently registered the Disputed Domain Name under its own business name on August 12, 2005, despite the fact that Respondent was expected and required to register the Disputed Domain Name in the name of Complainant’s predecessor in interest. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent fails to give control of the disputed domain name to Complainant and has disabled use of the webpage connected to Complainant’s services.
Respondent registered and used the <kassonsandandgravel.com> domain name in bad faith as Respondent fraudulently registered the disputed domain name under its own business despite the fact that Respondent was expected to register the disputed domain name under Complainant’s predecessor.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that does business in the provision and sale of sand, gravel, and stone products.
2. Complainant has established its common law trademark rights in the KASSON SAND AND GRAVEL mark through its long standing use of the mark in commerce and that of its predecessor in interest since at least 1982.
3. Respondent registered the <kassonsandandgravel.com> domain name on
August 12, 2005. Respondent fraudulently registered the Disputed Domain Name under its own business name despite the fact that Respondent was expected and required to register the Disputed Domain Name in the name of Complainant’s predecessor in interest.
4. Respondent has failed and refused to give control of the disputed domain name to Complainant who is entitled to it and Respondent has disabled use of the webpage connected to Complainant’s services.
5. The evidence shows that Respondent has no rights or legitimate interest in the domain name and that Respondent registered and has used the domain name in bad faith.
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. Complainant submits that it has common law rights in the KASSON SAND AND GRAVEL mark through its long standing use of the mark in commerce. Establishing longstanding use of a mark in commerce may show that a complainant has common law rights in a mark per Policy ¶ 4(a)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are adequate to sustain its claim of common law rights in the MELLO and MELLO SOLAR marks.”). Here, Complainant argues and establishes by the evidence that the KASSON SAND AND GRAVEL mark has been used by it and by its predecessor in interest in commerce since 1982 and that Complainant was assigned the rights, title, and interests of the mark in June 2016. Therefore, as the Panel agrees it finds that Complainant has shown rights in the mark per Policy 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s KASSON SAND AND GRAVEL mark. Complainant argues that Respondent’s <kassonsandandgravel.com> domain name is confusingly similar to Complainant’s KASSON SAND AND GRAVEL mark. Registration of a domain name that contains a mark in its entirety and adds a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Here, Complainant argues that Respondent incorporates the mark in its entirety and adds the “.com” gTLD. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s KASSON SAND AND GRAVEL mark per 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 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”).
(a) Respondent has chosen to take Complainant’s KASSON SAND AND GRAVEL trademark and to use it in its domain name, using the mark in its entirety;
(b) Respondent registered the <kassonsandandgravel.com> domain name on August 12, 2005;
(c) Respondent has failed and refused to give control of the disputed domain name to Complainant who is entitled to it and Respondent has disabled use of the webpage connected to Complainant’s services;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <kassonsandandgravel.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the KASSON SAND AND GRAVEL mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Stephen Sutherland” and there is no other evidence to suggest that Respondent was authorized to use the KASSON SAND AND GRAVEL mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent fails to give control of the disputed domain name to Complainant who is entitled to it and has disabled use of the webpage connected to Complainant’s services. Failure of a registrant to release control to the proper owner of a disputed domain name and block their services related to the domain name is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). Additionally, this failure may show that a respondent lacks rights or legitimate interests in the domain name per Policy ¶ 4(a)(ii). See Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark), see also Dominic Vetere v. DAVE CARRIER / DC FINANCE INC, FA 1707259 (Forum Jan. 24, 2017)(holding that “former employees of a company no longer hold any rights or legitimate interests in the company’s mark”). Here, Complainant argues that Respondent has failed to give control of the <kassonsandandgravel.com> domain name to Complainant and instead has caused the domain name to stop providing content related to Complainant’s business. See Compl. Ex. D. Therefore, as the Panel agrees it finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii) which shows that Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
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 used the <kassonsandandgravel.com> domain name in bad faith as Respondent fraudulently registered the disputed domain name under its own business despite the fact that Respondent was expected to register the disputed domain name under Complainant’s predecessor. Registration of a domain name and refusal to transfer the disputed domain name to the proper owner may be evidence of bad faith per Policy ¶ 4(a)(iii). See Holding Company of The Villages, Inc. v. Jaime Goldsmith, FA 1673212 (Forum June 16, 2016) (finding the respondent’s status as a former employee of complainant’s dispositive in holding the respondent had actual knowledge of the complainant’s mark and rights and thus registered the disputed domain name in bad faith). Here, Complainant has provided the Panel with evidence of it acquiring the disputed domain name from the original owner and the subsequent related marks and business holdings. See Compl. Ex. B. Further, Complainant argues that Respondent has failed to give control of the disputed domain name to Complainant who is entitled to it and instead has caused the domain name to stop providing content related to Complainant’s business. See Compl. Ex. D. Therefore, the Panel agrees and finds that Respondent has registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Secondly, the Panel notes that arguments under Policy ¶ 4(b) are merely illustrative rather than exclusive. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). As such, the Panel finds Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to support a finding of bad faith.
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 <kassonsandandgravel.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 3, 2021
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