Virtuoso, Ltd. v. Benjamin Foote
Claim Number: FA2206002002691
Complainant is Virtuoso, Ltd. (“Complainant”), represented by Shannon W. Bates of Harper & Bates LLP, Texas,. USA. Respondent is Benjamin Foote (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wanderlist.com> (“Domain Name”), registered with NameCheap, Inc.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2022; the Forum received payment on June 30, 2022.
On June 30, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <wanderlist.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 July 6, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 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 July 6, 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 July 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Complainant is a Texas-based global travel agency. Complainant claims rights in the WANDERLIST mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,023,563 registered September 6, 2011). The disputed domain name <wanderlist.com> is identical or confusingly similar because it wholly incorporates Complainant’s registered mark, differing only with the addition of the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <wanderlist.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the WANDERLIST mark in any way. Additionally, Respondent fails to use the Domain Name in connection with make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent fails to make active use of the Domain Name.
Respondent registered and uses the Domain Name in bad faith. Respondent fails to make active use of the Domain Name. Furthermore, Respondent used a privacy service to register the Domain Name.
Respondent failed to submit a Response in this proceeding.
Complainant having failed to establish bad faith registration and use of the domain name <wanderlist.com> has not established all required elements of its claim, and thus its complaint must be denied.
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 rights in the WANDERLIST mark based on registration with the USPTO (e.g Reg. No. 4,023,563 registered September 6, 2011). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that the <wanderlist.com> domain name is identical to Complainant’s WANDERLIST mark as wholly incorporates the WANDERLIST mark and adds the gTLD “.com”. Adding a gTLD to a wholly incorporated trademark does not negate the similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.
The Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Respondent’s registration of the <wanderlist.com> domain name predates Complainant’s first claimed rights in the WANDERLIST mark, and thus Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce.”) Here, Respondent registered the Domain Name, which consists of two descriptive words, on August 28, 1998. Complainant first used the WANDERLIST mark in commerce on October 5, 2009. Respondent could not have entertained bad faith intentions respecting the WANDERLIST mark because it could not have contemplated Complainant’s then non-existent rights in WANDERLIST mark at the moment the domain name was registered.
Therefore, the Panel finds Respondent did not register the Domain Name in bad faith.
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 <wanderlist.com> domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: July 29, 2022
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