Featurewell.com Inc. v. August Johansen
Claim Number: FA2208002006821
Complainant is Featurewell.com Inc. (“Complainant”), represented by Paul Rapp, New York, USA. Respondent is August Johansen (“Respondent”), Denmark.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <featurewell.com>, registered with Moniker Online Services 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 Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2022; the Forum received payment on August 2, 2022.
On August 4, 2022, Moniker Online Services LLC confirmed by e-mail to the Forum that the <featurewell.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 August 4, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 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 postmaster@featurewell.com. Also on August 4, 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 August 29, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable 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 produces an online publication providing news, feature-length journalistic articles and information, on a wide variety of topics through a global computer network.
Complainant registered the domain name <featurewell.com> in 1999 and used it to support its website where it published various articles. Complainant was itself incorporated in 2000.
Complainant also registered the FEATUREWELL.COM trademark with the USPTO on November 27, 2001. The registration lapsed in 2006 and was cancelled on June 29, 2012.
Complainant has common law trademark rights in the FEATUREWELL.COM mark.
The disputed domain name is identical or confusingly similar to the FEATUREWELL.COM mark.
Respondent has no legitimate interests in the <featurewell.com> domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent has caused the disputed domain name to resolve to archival pages from Complainant’s former website. There can be on legitimate reason for Respondent to retain or to be using Complainant’s domain name to reproduce former articles from Complainant’s website without authority.
Respondent registered and uses the <featurewell.com> domain name in bad faith. Respondent opportunistically registered the disputed domain name after Complainant inadvertently let registration of the disputed domain name lapse. Respondent has used the disputed domain name to reproduce former articles from Complainant’s website without authority.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides an online publication in the nature of providing news, feature-length journalistic articles and information, on a wide variety of topics through a global computer network.
2. Complainant has established its common law trademark rights in the FEATUREWELL.COM mark and that it has had those rights since 1999.
3. Complainant registered the disputed domain name and used in its business, including to support a website, but the registration lapsed and Respondent then opportunistically registered the domain name itself and has since retained control over it.
4. Respondent has used the disputed domain name to pass itself off as Complainant and to publish former articles from Complainant’s website.
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 holds common law rights in the FEATUREWELL.COM mark and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant submits that it has common law rights in FEATUREWELL.COM as it first registered the disputed domain name in 1999, initially registered a trademark with the USPTO for the FEATUREWELL.COM mark, and registered a business in New York state that remains active and in good standing, under the name Featurewell.com Inc.. See Compl. Exhibits A-C. Having regard to all the circumstances, the Panel finds that Complainant has established its common law rights to the FEATUREWELL.COM mark and that Complainant has had those rights since at least 1999.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FEATUREWELL.COM mark. Comparing the domain name with the most prominent part of the trademark, which is FEATUREWELL, the two are clearly identical, save for the ‘.com’ gTLD which is ignored for this purpose, as all domain names require such an extension. The Panel therefore finds that the domain name is identical to the trademark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Complainant registered the disputed domain name and used in its business, including to support a website, but the registration lapsed and Respondent then opportunistically registered the domain name itself and has since retained control over it;
(b) In registering the domain name, Respondent has chosen to take Complainant’s FEATUREWELL.COM trademark and to use it in the domain name;
(c) Respondent has used the disputed domain name to pass itself off as Complainant and to publish former articles from Complainant’s website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the <featurewell.com> domain name to pass itself off as Complainant. Where the respondent uses a disputed domain name to pass itself off as a complainant, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provides screenshots of the disputed domain name’s resolving page displaying archival pages from Complainant’s website at a time when Complainant was the registrant of the domain name. See Compl. Exhibit D. As the Panel agrees, it finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response in this proceeding or sought by any other means to rebut the prima facie case established by Complainant, 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, while Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary evidence considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant contends that Respondent uses the disputed domain name in bad faith because the disputed domain name was registered after Complainant accidently let the registration lapse on the disputed domain name and the Respondent registered the domain name opportunistically. Where a Respondent registers a disputed domain name opportunistically, the Panel may find bad faith registration. See Aurbach v. Saronski, FA 155133 (Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”) Here, Complainant contends that the lapse of registration in the disputed domain name only occurred because of a failure to be notified that a previous form of payment was declined. See Affidavit of David Wallis. Therefore, the Panel finds that Respondent has registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the FEATUREWELL.COM mark, which was itself an act of bad faith and then retaining the domain name and in view of the entire conduct of Respondent with respect to the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
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 <featurewell.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: August 31, 2022
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