DECISION

 

OneMore, LLC v. Star Tate

Claim Number: FA2308002059649

PARTIES

Complainant is OneMore, LLC ("Complainant"), represented by John L Krieger of Dickinson Wright PLLC, Nevada, USA. Respondent is Star Tate ("Respondent"), Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <tateandtaylor.com>, ('the Domain Name') registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 29, 2023; Forum received payment on August 29, 2023.

 

On August 31, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <tateandtaylor.com> Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 2023 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@tateandtaylor.com. Also on September 5, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On September 26, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant's contentions can be summarised as follows:

 

The Complainant is the owner of the trade mark TATE & TAYLOR, registered, inter alia, in the USA for retail services in relation to pet accessories since 2023, but applied for and registered with a priority date of 2019 and which was advertised publicly in 2020.   

 

The Domain Name registered by the Respondent in 2021 is confusingly similar to the Complainant's mark, containing it in its entirety, merely converting the ampersand in the mark which cannot be expressed in a domain name to the equivalent word 'and' and adding the .com gTLD.

 

Respondent is not commonly known by the Domain Name and has not been authorised by the Complainant to use the Complainant's mark. The Domain Name has been used to point to commercial pay per click links, which is not a bona fide offering of goods or services or a non commercial legitimate and fair use.

 

Respondent has registered a domain name containing the Complainant's mark in opportunistic bad faith to resolve to pay per click links causing confusion and disruption to the Complainant's business.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the trade mark TATE & TAYLOR, registered, inter alia, in the USA for pet accessories since 2023, but applied for and registered with a priority date of 2019 and publicly advertising in 2020.

 

The Domain Name registered by the Respondent in 2021 has been used for commercial pay per click links.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The Domain Name consists of a version of the Complainant's TATE & TAYLOR mark (which is registered in USA for retail services relating to pet products as of 2019) with the ampersand replaced by the word 'and', and the gTLD .com.

 

The Panel agrees that the substitution of an ampersand with the word 'and' does not prevent confusing similarity between a complainant's mark and a domain name. See Villeroy & Boch AGVi v. Whois Data Shield/Hong Kong Names LLC, WIPO Case No. D2008-1300, where the ampersand symbol was replaced with the word "and" in the domain name <villeroyandboch.com>, but did not affect the finding of confusingly similar to the trademark VILLEROY & BOCH.  

 

The gTLD .com does not serve to distinguish the Domain Name from the Complainant's mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

The Domain Name has been used for commercial pay per click links. Use for commercial competing pay per click links does not constitute a bona fide offering of goods or services or a legitimate non commercial or fair use. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) ("Respondent's use of .. domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.").

 

The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.

 

As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

The Domain Name was registered following the publication of the Complainant's trade mark application TATE & TAYLOR in 2020. The Respondent has not responded to the allegations in this Complaint that by registering the Domain Name the Respondent was targeting the Complainant.  The Domain Name incorporates both elements of the Complainant's mark, making a distinctive and arbitrary mark, seemingly of no relevance to the Respondent on the evidence before the Panel. It is more likely than not that following the advertisement of the Complainant's trade mark publicly for opposition purposes the Respondent registered the Domain Name to target the Complainant in anticipation of the value of the Domain Name to the Complainant. As such the Panel makes the finding that the Domain Name was registered in opportunistic bad faith.  See The Barack Obama Foundation v. michael board / Championshipblackjack, Inc, FA 1954598 (Forum Sept. 7, 2021) ("Complainant submits that Respondent registered the Domain Names in bad faith because their registration was opportunistic, since the Domain Names were registered in anticipation of former President Barack Obama's political career. Registration of a disputed domain name in anticipation of the disputed domain name having value can be evidence of opportunistic bad faith per Policy ¶ 4(a)(iii).... Complainant argues that Respondent deliberately registered the Domain Names to capitalize off the value related to the eventual Obama Presidential Center. The Panel sees merit in this argument and concludes the Domain Names were registered with opportunistic bad faith.").

 

Further use for pay per click links indicates bad faith being disruptive of the Complainant's business and diverting customers for commercial gain and can indicate actual knowledge of the Complainant and its business. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to their website by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or products or services offered on it likely to disrupt the business of the Complainant. See Health Republic Insurance Company v Above.comLegal, FA 1506001622088, (Forum July 10, 2015) re diversion to pay per click links.

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and (iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tateandtaylor.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Dawn Osborne, Panelist

Dated: September 27, 2023