Platinum Luxury Auctions LLC v. Sherman L. Ragland, II
Claim Number: FA2111001974395
Complainant is Platinum Luxury Auctions LLC (“Complainant”), represented by Mark C. Johnson, Florida, USA. Respondent is Sherman L. Ragland, II (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <luxuryauction.com> and <luxuryauctions.com>, registered with eNom, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 22, 2021; the Forum received payment on November 22, 2021.
On November 23, 2021, eNom, LLC confirmed by e-mail to the Forum that the <luxuryauction.com> and <luxuryauctions.com> domain names are registered with eNom, LLC and that Respondent is the current registrant of the names. eNom, LLC has verified that Respondent is bound by the eNom, 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 November 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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, email@example.com. Also on November 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 December 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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.
Complainant contends as follows:
Complainant conducts real estate auctions.
Complainant has rights in the LUXURY AUCTION mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. 5,057,231, registered Oct. 11, 2016), as well as common law rights.
Respondent’s <luxuryauction.com> and <luxuryauctions.com> domain names are identical or confusingly similar to Complainant’s mark.
Respondent lacks rights and legitimate interests in the luxuryauction.com> and <luxuryauctions.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized or licensed respondent to use its LUXURY AUCTION mark. Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses, but instead inactively holds the domain names.
Respondent uses the <luxuryauction.com> and <luxuryauctions.com> domain names in bad faith. Respondent previously used the domain names to host parked, pay-per-click links. Respondent also previously and presently inactively holds the disputed domain names.
Respondent failed to submit a Response in this proceeding. However, The Panel notes that the <luxuryauction.com> and <luxuryauctions.com> domain names were registered on Aug. 21, 1998.
Complainant has rights in the LUXURY AUCTION mark.
Complainant’s has not authorized or licensed Respondent to use its LUXURY AUCTION mark.
Complainant’s trademark consists of otherwise descriptive terms.
The at-issue domain names were first registered in 1998.
Complainant’s first used its LUXURY AUCTION mark in commerce in 2010.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its LUXURY AUCTION mark with the USPTO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <luxuryauction.com> and <luxuryauctions.com> domain names each incorporate Complainant’s LUXURY AUCTION trademark less it space. In one of the domain names an “s” is added. Both domain names conclude with the top-level domain name “.com.” Under the Policy, the slight differences between each of Respondent’s domain names and Complainant’s trademark do nothing to distinguish either <luxuryauction.com> or <luxuryauctions.com> from Complainant’s LUXURY AUCTION mark. Therefore, the Panel concludes that Respondent’s <luxuryauction.com> and <luxuryauctions.com> domain names are each confusingly similar or identical to Complainant’s LUXURY AUCTION trademark under Policy ¶ 4(a)(iii). See Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (finding the at-issue domain name domain name is identical or confusingly similar to Complainant’s mark as the domain name consists completely of such mark and merely adds the top level domain name); see also, LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
The two terms comprising LUXURY AUCTION are generic and taken together, descriptive. “LUXURY AUCTION” and thus “LUXURY AUCTIONS” have a common meaning apart from any trademark value each may have acquired through use in commerce. One may register domain names, such as the at-issue domain names, that contain common words on a first come, first served basis. Doing so establishes a respondent’s rights and/or legitimate interest in a domain name provided that the domain name(s) were not registered with a target trademark in mind. See National Gardening Association, Inc. v. CK Ventures, FA 1294457 (Forum Feb. 16, 2010) (“common words and descriptive terms are legitimately subject to registration as domain names on a first come, first-served basis”).
Here, there is no indication that Respondent uses, or has ever actively used the domain name to exploit their trademark value in the category of goods and services covered by Complainant’s mark or otherwise. Notably, Complainant did not have trademark rights in the at-issue domain name at the time of the domain names’ registration and so Respondent had every right to register the at-issue domain names. The domain names were registered in 1998 (per WHOIS information), while Complainant admits it first used LUXURY AUCTION in commerce in 2010. Complainant’s does not claim that Respondent was aware of Complainant’s trademark rights in LUXURY AUCTION at any time prior to the instant dispute. Nor is a conclusion that Respondent was aware of Complainant’s trademark rights prior to the instant dispute inferred from the record. See CNRV, Inc. v. Vertical Axis, Inc., FA 1300901 (Forum May 3, 2010) (legitimate interest is established where “domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”).
Based on the foregoing, the Panel finds that Respondent has rights or interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii), despite the fact that Respondent is neither authorized to use Complainant’s trademark, nor commonly known by either the <luxuryauction.com> or the <luxuryauctions.com> domain name. See Energy Source Inc. v. Your Energy Source, FA. 96364 (Forum Feb. 19, 2001) (“[r]espondent has persuasively shown that the domain name is comprised of generic and/or common descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also LML Investments LLC v. P.A. Gordon, FA 1571756 (Forum Sept., 2014) (“Such use of the disputed domain name in connection with its descriptive meaning establishes Respondent’s rights and interests in the disputed domain name.”).
While the Panel may conclude its analysis having found Respondent to have rights or legitimate interest in the at-issue domain name pursuant to Policy ¶ 4(a)(i), the Panel nevertheless elects to discuss Policy ¶ 4(a)(iii).
A respondent’s bad faith under Policy ¶ 4(a)(iii) almost universally requires a showing that the complainant’s trademark rights predate the time the respondent registered the at-issue domain name.
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
WIPO, WIPO Overview of WIPO Panel Views on Selected UDRP Questions ¶ 2.1 (2d ed.).
Thus, if a complainant does not have trademark rights at the time of a domain name’s registration ‑even though it may have such rights at the time of the parties’ dispute‑, there can be no bad faith registration on the part of the domain registrant/respondent. Numerous decisions support this logical proposition. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001); see also, also Digital Vision, Ltd. v. Advanced Chemill Sys., D2001-0827 (WIPO September 23, 2001); see also , PrintForBusiness B.V v. LBS Horticulture, D2001-1182 (WIPO December 21, 2001).
As mentioned previously, WHOIS information for the at-issue domain name shows Respondent first registered the domain names in 1998 and Complainant admits that it first used its LUXURY AUCTION trademark in commerce in 2010. The Panel again points out that at the time of the at-issue domain names’ original registration by Respondent, Complainant lacked rights in its LUXURY AUCTION trademark. Therefore, Respondent could not have registered the at-issue domain name to take advantage of Complainant goodwill in LUXURY AUCTION because at such time Complainant had no trademark rights and thus no goodwill associated with LUXURY AUCTION. Furthermore and as also mentioned regarding rights and legitimate interests, Complainant fails to show that Respondent was ever aware of Complainant’s claim of rights in LUXURY AUCTION prior to Respondent having received notice of the instant dispute. Without knowledge of Complainant mark prior to the instant dispute Respondent could use its domain names as it did without exhibiting bad faith under the Policy.
Given the foregoing, the Panel concludes that Complainant does not, and cannot, meet its burden regarding Respondent’s bad faith registration and use of the <luxuryauction.com> and <luxuryauctions.com> domain names under Policy ¶ 4(a)(iii).
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 <luxuryauction.com> and <luxuryauctions.com> domain names REMAIN WITH Respondent.
Paul M. DeCicco, Panelist
Dated: December 28, 2021
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