Liberty Puzzles, LLC v. Domain Manager / Data Point Limited
Claim Number: FA2204001994151
Complainant is Liberty Puzzles, LLC (“Complainant”), represented by Chad T. Nitta of Kutak Rock LLP, Colorado, USA. Respondent is Domain Manager / Data Point Limited (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <libertypuzzle.com>, which is registered with CommuniGal Communication Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2022, and the Forum received payment on April 27, 2022.
On April 29, 2022, CommuniGal Communication Ltd. confirmed by e-mail to the Forum that the domain name <libertypuzzle.com> is registered with CommuniGal Communication Ltd. and that Respondent is the current registrant of the domain name. CommuniGal Communication Ltd. has verified that Respondent is bound by the CommuniGal Communication Ltd. 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 May 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2022, 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. Also on May 2, 2022, 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 May 31, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a small, family-owned company formed in 2005, which sells unique, highly specialized jigsaw puzzles sold in stores and through its website at <libertypuzzles.com>.
Complainant has common law rights in the LIBERTY PUZZLES mark based on its long, continuous and extensive use of the mark in commerce from the date of its creation as a limited liability company on July 18, 2005.
Respondent registered the domain name <libertypuzzle.com> on December 18, 2007.
Respondent has not been commonly known by the domain name.
Respondent is not authorized to use Complainant’s LIBERTY PUZZLES mark.
The domain name is confusingly similar to Complainant’s LIBERTY PUZZLES mark.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, the domain name resolves to a parked webpage which currently hosts an advertisement with links to the websites of three of Complainant’s commercial competitors, one of which sells wooden jigsaw puzzles and all of which sell puzzle products.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
In registering the domain name, Respondent used a privacy service to shield its identity.
Respondent has registered and now uses the domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant has failed to demonstrate that it has rights in its claimed mark under the common law sufficient to satisfy the proof requirements of Policy ¶4(a)(i).
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
The domain name <libertypuzzle.com> is incontestably confusingly similar to Complainant’s claimed LIBERTY PUZZLES mark. The domain name incorporates the claimed mark in its entirety, with only deletion of the space between its terms and of the letter “s,” plus addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the claimed mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
With respect to Respondent’s deletion of the letter “s” from Complainant’s mark in creating the domain name, see, for example, Novartis AG v. Ancient Holdings, LLC, D2014-1084 (WIPO August 27, 2014):
The Complainant has been able to demonstrate that it has rights in numerous trademarks NOVARTIS…. The disputed domain name is the term “novartis”, but without the “s” at the end, in what is simply a misspelling of the Complainant's mark. … [P]revious UDRP panels … have held that a domain name that is identical to another's mark but for a minor misspelling creates virtually identical and/or confusingly similar marks satisfying the requirement of paragraph 4(a)(i) of the Policy.
And, as to Respondent’s deletion of the space between the two terms of Complainant’s claimed mark, this feature of the domain name is of no consequence to our analysis because domain name syntax does not permit the use of blank spaces. See, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 19, 2003):
[S]paces between words are not significant in determining the similarity of a domain name and a mark because … spaces are not reproducible in a domain name.
But our analysis under Policy¶4(a)(i) does not end with a determination of confusing similarity, because Complainant must also show that it has rights in the claimed LIBERTY PUZZLES mark sufficient to demonstrate that it has standing to pursue its claim in a UDRP proceeding. On this point, Complainant offers that, while it has not obtained registration of its mark with a competent trademark authority, it does have common law rights in the mark running from creation of its business organization on July 18, 2005.
A showing of rights in a mark acquired under the common law would meet the test of standing under Policy¶4(a)(i). See, for example, Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum March 8, 2007) (finding that Policy¶4(a)(i) does not require a trademark registration if a UDRP complainant can show that it has common law rights in its mark). The required showing may be made in a variety of ways. See, for example, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, at sec. 1.3:
Relevant evidence … includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
Complainant asserts that it has used the mark in commerce continuously since the indicated date and has advertised its products and services under the mark.
However, Complainant offers no evidence in support of its contentions. Markedly absent from its presentation is any proof of its sales revenues and advertising expenditures as well as a showing of public recognition of the mark in the critical period between creation of its business in 2005 and registration of Respondent’s domain name in 2007.
This failure of proof cannot support a finding of secondary meaning in the mark, and, therefore, of common law rights in it satisfying the requirements of Policy¶4(a)(i). See, for example, CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015), finding that a UDRP complainant failed to establish common law rights in a mark where:
Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media.
For this reason, we conclude that Complainant has failed to establish that it has rights in the claimed LIBERTY PUZZLES mark under the common law conferring upon it standing to pursue the present claim under the terms of the Policy.
Because to prevail in its effort to obtain a decision ordering transfer to it of the contested domain name, Complainant must satisfy by evidence each of the three subsections of Policy¶4(a), its failure to meet the proof requirements of any of them must be fatal to its cause. See, for example, Netsertive, Inc. v. Ryan Howard, FA 1721637 (Forum April 17, 2017) (finding that, because a UDRP complainant must prove all three elements of Policy ¶ 4(a), its failure to prove one of them makes inquiry into the remaining elements unnecessary). See also Wasatch Shutter Design v. Duane Howell, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into a respondent’s rights to or legitimate interests in a disputed domain name or its registration and use in bad faith where a UDRP complainant failed to satisfy the proof requirements of Policy ¶ 4(a)(i)).
We therefore decline to inquire into Complainant’s remaining contentions.
Complainant having failed to establish one of the three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the <libertypuzzle.com> domain name REMAIN WITH Respondent.
Terry F. Peppard, Panelist
Dated: June 7, 2022
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