DECISION

 

Elbow Enterprises LLC v. GRUPO SA / Grupo S.A.

Claim Number: FA2310002067951

PARTIES

Complainant is Elbow Enterprises LLC ("Complainant"), represented by Leonard Searcy of Shook, Hardy & Bacon LLP, Missouri, USA. Respondent is GRUPO SA / Grupo S.A. ("Respondent"), represented by Gary Schepps of Schepps Law Offices, Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <christopherelbow.com>, registered with NameSilo, LLC.

 

PANEL

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

 

Gerald M. Levine as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 26, 2023; Forum received payment on October 26, 2023.

 

On October 26, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <christopherelbow.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 October 26, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@christopherelbow.com. Also on October 26, 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.

 

A timely Response was received and determined to be complete on November 16, 2023.

 

An Additional Submission was received from the Complainant on November 18, 2023 together with an Annex 4 together with eleven Exhibits.

 

On November 16, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Gerald M. Levine 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS 

A. Complainant

The Complainant bears the relatively rare family name of Elbow, with a first name of Christopher, and as a business that he established in 2003 he has risen to niche-fame as a chocolatier. He claims that his reputation preceded his forming Christopher Elbow Chocolates, LLC as an internationally recognized chef and chocolatier dating back to the 1990s.

He supports this reputation prolifically with over 50 pages of commentary and awards including a write-up in The Oprah Magazine. 

 

On these well-established grounds, the Complainant claims that he has common law rights to his name predating the registration of the disputed domain name on December 27, 2004. He also has a USPTO issued trademark in March 2018.

 

The Complainant also argues, and the evidence demonstrates, that Respondent has actual knowledge of him and his business in that <christopherelbow.com> "resolves to a website featuring links related to Complainant's business and redirects Internet users to Complainant's competitors." Finally, the Complainant shows that Respondent has a pattern of bad faith registrations and uses of other domain names and all have been transferred.

 

The Panel notes with regard to the prolific commentary and awards that they post-date the registration of <christopherelbow.com>. To prevail in a UDRP proceeding, a complainant must prove that the respondent both registered and is using the disputed domain name in bad faith. Complainant does not adequately address this issue of an earlier registered domain name that may have been innocently registered for the reasons stated by the Respondent but is currently being used in bad faith. There is either one of two explanations: either the Respondent registered <christopherelbow.com> in good faith and is using it in bad faith, or that the Respondent is not the creation-date registrant and targeted the Complainant when it subsequently acquired <christopherelbow.com>. The determination of this issue is central to resolving this dispute.

 

B. Respondent

The Respondent claims that he registered <christopherelbow.com> "fourteen years before the Complainant registered its trademark" (Bold and Underlined in the Response). He states further that "there is no evidence that the Respondent, which is not from Missouri, had any [knowledge of the Complainant]." 

 

Furthermore, "The Respondent(sic) [a typographical error for Complainant] claims that it first offered or promoted goods or services under the name Christopher Elbow on the internet 'since June 13, 2005.' That purported promotion on the internet was after the Respondent's domain name was registered in 2004" (Bold and Underlined in the Response).

 

Respondent further claims that "Complainant admits that the Respondent registered the Christoper[sic[Elbow.com domain name fourteen years before  the Complainant registered its marks."  It also alleges that "In 2004 when the domain name was registered there was no competing trademark registration and the domain is a personal name 'Christopher' added the term 'Elbow' which is a part of the body." In a footnote, Respondent adds that the "Complainant does not identify the Respondent, offers no evidence that the Respondent does not hold rights to the name 'Christopher Elbow', and fails to meet its burden of proof on that issue as well."¹ 

 

The Panel notes with regard to Respondent's footnote claiming that Complainant "offers no evidence that the Respondent does not hold rights to the name 'Christopher Elbow'" is not evidence that Respondent does hold such rights. Post-the General Data Protection Regulation (GDPR) by the European Union effective May 25, 2018 there is no certainty who the creation-date registrant is. The registrar is only required to disclose the current registrant, thus it is easy to allege that a complainant has not proved a material fact which it has no means of easily discovering. In disputes such as this, where the Respondent claims to be the creation-date registrant only it has that evidence that proves it so, and that evidence is not forthcoming in this matter.   

 

CERTIFICATION OF RESPONSE AND HEARSAY

Respondent appears in this proceeding with Counsel who has certified to the truth of the allegations of fact contained in the Response. See Texans For Lawsuit Reform, Inc. v. Kelly Fero, WIPO Claim No. D2004-0778 (Holding that "certification [. . .] cannot overcome a dearth of hard evidence, especially when counsel (who usually lacks personal knowledge of the factual allegations for which the party is responsible) submits a pleading on a party's behalf.")  Here too, Counsel lacks personal knowledge of the factual allegations and there is no declaration by the Respondent as to the truth of those allegations. 

 

As it may (see WIPO Overview, 3.0 at Sec. 4.8), the Panel performed limited factual research by going to the Internet Archive at <archive.org> and researching the historical information for <christopherelbow.com> on DomainTools.

 

The Internet Archive shows a first reported capture of <christopher elbow.com> on January 15, 2010. The Panel was unable to access the page or any other page because they are "403 Forbidden." Wikipedia states for this code: "HTTP 403 is an HTTP status code meaning access to the requested resource is forbidden. The server understood the request, but will not fulfill it." The Panel concludes that the Respondent intentionally took steps to mask its identity and website content.

 

DomainTools provided additional information that the name of the creation-date registrant was Texas International Property Associates and that on or around December 29, 2010 <christopherelbow.com> was registered under the name of a privacy service. As there has been no further change of registrant between 2010 and the present, it follows that Grupo SA acquired <christopherelbow.com> at that time.

 

FINDINGS 

The Panel finds that Counsel's certification as to the date of Respondent's rights is false and therefore stricken from the record as inadmissible hearsay. Further, Respondent's intentional masking of the contents of its website from the date it acquired <christopherelbow.com> leads the Panel to conclude that its use from 2010 was (as it presently is) for the purpose of cybersquatting on the Complainant mark.

 

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.

 

Identical and/or Confusingly Similar

 

The Complainant has demonstrated that it owns a trademark issued by the USPTO Registration No. 5,426,926 dated March 20, 2018 for the term CHRISTOPHER ELBOW. As the domain name is identical to the mark the Complainant has also demonstrated that it has standing to maintain this administrative proceeding.

 

As earlier noted <christopherelbow.com> was registered on December 27, 2004, and I have already concluded that Complainant's documentary evidence which is very impressive is insufficient to support common law rights so early after the forming of its business in 2003.  

 

This deficiency of proof, therefore, must be reexamined in light of the fact that the Respondent was not the creation-date registrant but acquired its contract right to use <christopherelbow.com> in 2010. Accordingly, the measure for determining secondary meaning is not from 2004 but from December 29, 2010. See Melinda French Gates v. John Clendenon, FA220700 2003541(Forum October 3, 2022) (holding that Complainant gained reputation over time and certainly by 2022 Ms. Gates was very well-known but she had no notoriety when, in 1999, the Respondent registered <melindagates.com>).

 

The Complainant is prolific in adducing evidence that by December 2010 it had a significant reputation in its niche market that supports its claim for common law rights. This includes commentary and awards in third-party publications.  

 

Accordingly, the Panel finds that the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

 

The Panel finds that the Complainant has stated a prima facie case that Respondent lacks rights or legitimate interests in <christopher elbow.com>, thus the burden shifts to the Respondent to produce evidence that it does have rights or legitimate interests.

 

However, as Respondent has not addressed paragraph 4(a)(ii) of the Policy it thereby concedes that it lacks rights or legitimate interest in <christopherelbow.com>. Even had it not conceded the point, the evidence of record is more than sufficient on this issue to establish that it lacks rights or legitimate interests in the domain name.

 

Accordingly, the Panel finds that the Complainant satisfies its burden under paragraph 4(a)(ii) of the Policy.  

 

Registration and Use in Bad Faith

 

The Respondent concentrates its argument on paragraph 4(a)(iii) of the Policy and specifically the time lapse between the registration of <christopherelbow.com> and the issuance of a trademark. As I noted above, the Respondent's claim of good faith registration is materially false as it acquired its right to use <christopherelbow.com> from an earlier registrant (who was itself a prolific cybersquatter) on December 29, 2010.

 

The Complainant adduces evidence that the Respondent is using the domain name in bad faith by populating the resolving website with hyperlinks leading Internet users to Complainant's competitor's websites. It argues from these facts that "Respondent has demonstrated actual knowledge of Complainant, Complainant's marks, and Complainant's business by its registration and use. The Panel agrees that it would be too much of a coincidence that the hyperlinks were innocently chosen and by failing to address the issue of hyperlinking, the Respondent concedes that its use of <christopher elbow.com> is being used in bad faith. See Nutramax Laboratories, Inc. v. GRUPO SA Ltd Co / Grupo S.A. Ltd Co., FA 2202001985605 (Forum March 30, 2022) ("Panels have found that respondents are ultimately responsible for the content of their resolving webpages"); 4IMPRINT, INC. v. richard olivo / rockpoint apparel inc., FA2104001942146 (Forum May 18, 2021) (holding that a "Respondent attracting internet traffic for commercial gain through the use of competing hyperlinks may be indicative of bad faith per Policy ¶ 4(b)(iv)").

 

The Policy sets out in paragraph 4(b) a set of nonexclusive circumstances on proof of any one of which or on the totality of evidence supports bad faith registration and use of the disputed domain name. Two circumstances in particular are relevant to this assessment, paragraphs 4(b)(ii) and 4(b)(iv) of the Policy. Paragraph 4(b)(ii) reads:

 

You have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, or in a corresponding domain name, provided that you have engaged in a pattern of such conduct;

 

Such a pattern of conduct is disclosed by the Respondent's conduct with other domain names it has been found to have abusively registered. This inference is confirmed from Respondent's history of cybersquatting. See Nutramax Laboratories, Inc. v. GRUPO SA Ltd Co / Grupo S.A. Ltd Co., FA 2202001985605 (Forum Mar. 30, 2022) ("Panels have found that respondents are ultimately responsible for the content of their resolving webpages"); also Total Gym Global Corp. v. GRUPO SA Ltd Co / Grupo S.A. Ltd. Co., FA2101001928027 (Forum February 12, 2021) ("It is clear from the circumstances described above in relation to the second element that Respondent was aware of Complainant's well-known TOTAL GYM mark when registering the <totalgymwarehouse.com> domain name [. . . ].) 

 

The Complainant has also established with competent evidence that the Respondent violates Paragraph 4(b)(iv), which reads:

 

[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

See Total Gym Global Corp. v. GRUPO SA Ltd Co / Grupo S.A. Ltd. Co., supra. ("It is clear from the circumstances described above [that it is using the disputed domain name] intentionally to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's mark as to the affiliation or endorsement of Respondent's website and of the pay-per-click links to gym workouts and equipment promoted on its website. The Panel therefore finds that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv)").

 

The final question is whether the Respondent registered <christopher elbow.com> in bad faith. As I pointed out earlier, the name "Christopher Elbow" is not a common surname. The Respondent's explanation that the name is a fictional character in a children's book or that its own first name is "Christopher" and he added the word "Elbow" for his own purposes cannot be accepted as a serious rebuttal but the Panel finds that it is a fiction dedicated to a fraudulent purpose. More likely than not, the Respondent was well aware when he acquired the domain name from the earlier notorious registrant that it knew precisely that it was paying for a source of click through income until it is shut down. 

 

Accordingly, the Panel finds that the Complainant satisfies its burden under paragraph 4(a)(iii) of the Policy.

 

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 <christopherelbow.com> domain name be TRANSFERRED from Respondent to Complainant.  

 

 

 

Gerald M. Levine, Panelist

Dated: November 27, 2023