Parchment LLC v. Jim Lovelle / Parchment Transcript LLC
Claim Number: FA2208002009654
Complainant is Parchment LLC ("Complainant"), represented by Dwayne K. Goetzel, Texas, USA. Respondent is Jim Lovelle / Parchment Transcript LLC ("Respondent"), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <parchment-verification.com>, registered with Google 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 24, 2022; the Forum received payment on August 24, 2022.
On August 25, 2022, Google LLC confirmed by email to the Forum that the <parchment-verification.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 26, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@parchment-verification.com. Also on August 26, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on August 26, 2022.
Additional submissions were received from Complainant on August 29, 2022, and from Respondent on August 29, 2022. Both of these submissions were received in a timely manner according to the Forum's Supplemental Rule 7.
On August 31, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has offered digital credential services under the PARCHMENT mark since at least as early as March 2011. Complainant's services include verification of academic transcripts. Complainant owns United States trademark registrations for PARCHMENT in standard character form and for a design mark that includes PARCHMENT in stylized form.
The disputed domain name <parchment-verification.com> was registered in January 2022. The name is registered in the name of a privacy registration service on behalf of Respondent. The domain name does not resolve to a website. Complainant states that Respondent is not commonly known by the domain name, is not associated with or affiliated with Complainant, and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <parchment-verification.com> is confusingly similar to its PARCHMENT mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent states that he is not using the disputed domain name for services within the scope of Complainant's trademark rights.
With respect to rights or legitimate interests, Respondent contends that mere ownership of the domain name "for the sake of owning it" can be considered a legitimate interest.
Respondent denies having any knowledge of Complainant prior to receiving the Complaint in this proceeding. Respondent also denies that he is attempting to create confusion with Complainant's mark or to attract anyone for commercial gain, noting that the domain name is not even being used for a website.
C. Additional Submissions
Additional submissions are appropriate only in very limited circumstances, such as to reflect newly discovered evidence not reasonably available to the submitting party at the time of its original submission, or rebut arguments by the opposing party that the submitting party could not reasonably have anticipated. See, e.g., Bette GmbH & Co. KG v. Perfect Privacy, LLC / Anthony Stewart, D2022-0612 (WIPO May 5, 2022); Certification Trendz, Ltd. v. TIEN VU NGOC / aiotestking.com, FA 1749175 (Forum Oct. 20, 2017). No such circumstances being apparent here, the Panel declines to consider either party's Additional Submission.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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.
The disputed domain name <parchment-verification.com> incorporates Complainant's registered PARCHMENT trademark, adding a hyphen and the term "verification," which describes an important aspect of Complainant's services, and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Parchment LLC v. Ge, Xiangchen, FA 1962121 (Forum Oct. 5, 2021) (finding <parchment-document.com> confusingly similar to PARCHMENT); Twitter, Inc. v. Sad Asdaa, FA 1991695 (Forum May 6, 2022) (finding <twitter-verification.com> confusingly similar to TWITTER); Vinted Ltd. v. Whois Privacy Service / Stephane Barett, D2019-3120 (WIPO Mar. 7, 2020) (finding <vinted-verification.com> confusingly similar to VINTED). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and Respondent does not appear to have made any active use of the domain name. Respondent has not challenged Complainant's allegation that Respondent is not commonly known by the disputed domain name. Apart from the domain name registration data, there is no indication that Respondent is known as "Parchment Transcript LLC," or that a legal entity even exists under that name.
Respondent's claim of legitimate interests appears to rest upon his unsubstantiated contention that such interests may arise from mere ownership of a domain name "for the sake of owning it." The Panel rejects this interpretation of the Policy. The Policy sets forth specific circumstances that can demonstrate rights or legitimate interests. See Paragraph 4(c). While this list is not exhaustive, its inclusion in the Policy would be superfluous if mere ownership of a domain name for its own sake created rights or legitimate interests. (This is not to say that the acquisition of a domain name comprised of a dictionary word or phrase for investment purposes cannot give rise to rights or legitimate interests in appropriate circumstances, though such is not the case here.)
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that combines Complainant's mark with a term describing an important aspect of Complainant's services, and does not appear to have made any active use of the name. In the domain name registration data, Respondent's putative business name includes the word "transcript," an additional reference to Complainant's business. And while Respondent has participated in this proceeding, he has given no indication of his use or intended use of the domain name, apart from "for the sake of owning it." Under the circumstances, the Panel considers it reasonable to infer that Respondent registered the disputed domain name intending to use it in a manner calculated to create and exploit confusion with Complainant's mark, most likely either by selling the domain name or by using it to attract Internet users seeking Complainant, and that Respondent is maintaining the domain name for that purpose. See, e.g., Blink Health Inc. v. Corey Cotts, FA 2003872 (Forum Aug. 10, 2022) (finding bad faith registration and use in similar circumstances); Vinted Ltd. v. Whois Privacy Service / Stephane Barett, supra (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <parchment-verification.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: September 1, 2022
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