DECISION

 

Granite Gear, LLC v. Cameron Douglas

Claim Number: FA2311002069170

PARTIES

Complainant is Granite Gear, LLC ("Complainant"), represented by Jennifer M. Mikulina and Abigail Rubinstein of McDermott Will & Emery LLP, Illinois, USA. Respondent is Cameron Douglas ("Respondent"), Massachusetts, USA, proceeding pro se.

 

REGISTRAR AND DISPUTED DOMAIN NAME

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

 

PANEL

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 H. Bernstein as the Sole Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 1, 2023; Forum received payment on November 1, 2023.

 

The Complaint named "Registration Private" and the organization "Domains by Proxy, LLC" as Respondent, as the publicly available WHOIS information hid the identity of Respondent behind a proxy service.

 

On November 1, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <granitegearlab.com> domain name is registered with GoDaddy.com, LLC and it lifted the privacy shield to indicate that Cameron Douglas is the current registrant of the name. GoDaddy.com, LLC has verified that Cameron Douglas 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").

 

Following GoDaddy.com, LLC's verification that Cameron Douglas is the actual owner of the Disputed Domain Name, on November 2, 2023, Forum notified Complainant of the proper identity of Respondent and its contact information based upon the Registrar's Email Verification.

 

On November 2, 2023, Complainant served an Amended Complaint (hereafter, the "Complaint") to identify Cameron Douglas as Respondent.

 

On November 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@granitegearlab.com. Also on November 3, 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.

 

On November 19, 2023, Respondent requested a four-day extension to serve its Response to the Complaint, pursuant to Paragraph 5(b) of the Rules for Uniform domain name Dispute Resolution Policy (the "Rules"). Forum granted the extension, and set a deadline of November 28, 2023 by which Respondent could file a Response to the Complaint.

 

A timely Response was received and determined to be complete on November 28, 2023.

 

On November 28, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David H. Bernstein 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 "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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant is a Delaware corporation with its principal place of business in Libertyville, Illinois. Complainant offers outdoor equipment such as backpacks, tactical gear, and accessories, both through retailers and direct-to-consumer on its website www.granitegear.com. Complainant owns two federal trademark registrations for GRANITE GEAR (one in standard characters and one in design form), both of which disclaim any exclusive rights in "GEAR" apart from the trademark as a whole.

 

Complainant also claims common law rights in the GRANITE GEAR mark based on its first use in 1986. Complainant's products have gained recognition in the outdoor equipment industry, and have won numerous awards for their comfort, functionality, and durability.

 

Complainant alleges that the Disputed Domain Name is nearly identical and confusingly similar to Complainant's GRANITE GEAR trademarks and to its <granitegear.com> domain name. Specifically, Complainant contends that the Disputed Domain Name (not including the gTLD <.com>) incorporates Complainant's mark, and merely adds the word "LAB."  According to Complainant, Respondent's registration of the Disputed Domain Name appears to be an attempt to create a likelihood of confusion with Complainant's marks and domain name, and to create confusion as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name.

 

Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant states it is entitled to a presumption of ownership, validity, and the exclusive right to use the GRANITE GEAR marks. According to Complainant, Respondent is not a licensee of Complainant and is not otherwise authorized by Complainant to use its marks or register the Disputed Domain Name. Complainant contends there is no indication that Respondent is commonly known by the Disputed Domain Name, the GRANITE GEAR name, or the GRANITE GEAR marks. Complainant additionally asserts that, because the Disputed Domain Name resolves to an inactive website, Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods and services, and is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Complainant thus concludes that Respondent has chosen the Disputed Domain Name to "profit and trade off the reputation and goodwill" associated with Complainant's marks, to "cause confusion among Internet users and third parties," and to "prevent Complainant from owning the domain name."

 

Finally, Complainant alleges that Respondent registered and is using the Disputed Domain Name in bad faith for five reasons: (1) Respondent had constructive notice of Complainant and its trademarks prior to registering the Disputed Domain Name; (2) given the "well-known status" of Complainant's marks, there is no reason for Respondent to have registered the Disputed Domain Name other than to trade off the goodwill and reputation of Complainant's marks; (3) Respondent registered the Disputed Domain Name primarily to disrupt Complainant's business; (4) the Disputed Domain Name does not resolve to an active website and constitutes passive holding; and (5) Respondent's registration of the Disputed Domain Name violates the Anticybersquatting Consumer Protection Act.

 

B. Respondent

 

Respondent denies infringement of Complainant's trademark rights primarily on three grounds: (1) Complainant's domain name <granitegear.com> and the Disputed Domain Name <granitegearlab.com> are not confusingly similar because Complainant offers goods and services distinct from those which Respondent plans to offer, and Respondent's mock website design differs from Complainant's website; (2) Respondent has legitimate interests in the Disputed Domain Name because he made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of services prior to any notice of the dispute or awareness of Complainant's marks; and (3) Respondent neither registered nor used the Disputed Domain Name in bad faith.

 

First, Respondent contends that Complainant's domain name <granitegear.com> and the Disputed Domain Name are not confusingly similar. Respondent claims that he plans to create a company called "Granite Gear Lab," which will provide "laundering service[s] for outdoor clothing, including puffy coats, rain coats, snow pants and more."  Respondent argues that, because laundry services do not overlap with the goods and services offered by Complainant, the "obvious difference between a laundry service and a backpack/gear manufacturer" will minimize potential confusion between the two brands. In addition, Respondent submitted evidence of a mock logo designed on Canva and a mock website designed on Squarespace for the Disputed Domain Name. Respondent argues that its ideated logo and website design are distinct from Complainant's marks and website, and thus that the two domain names are not confusingly similar.

 

Second, although Respondent acknowledges the existence and duration of Complainant's marks, Respondent contests the "well-known" status of Complainant's marks and asserts that he was unaware of Complainant and its marks until notice of the Complaint. Respondent admits that he is not a licensee of the marks, and does not contest that he is not known by the name "Granite Gear Lab."  However, Respondent states that, prior to any notice of the dispute, he had made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of laundry services. In support of this contention, Respondent submitted the following evidence: an Apple Notes document dated September 23, 2023 which contains a list of ideated business names and includes the name "Granite Gear Lab"; and an Apple Notes document dated October 3, 2023 which contains rough sketches of a logo; and screenshots of a trial website with Squarespace. Respondent further certifies that he created a "full unit economic model" of his laundry service, but did not submit evidence of this model to the Panel due to "sensitivity" concerns.

 

Third, Respondent denies that his registration and use of the Disputed Domain Name were in bad faith. Respondent alleges that he formulated the business name "Granite Gear Lab" and website independent of any knowledge of Complainant. Respondent claims that the name "Granite Gear Lab" was derived from the official rock (granite) of the State of New Hampshire, with which Respondent has a personal connection, and that the term "Gear Lab" is designed to "play on modern tendencies to make services and businesses sound more technical."  Respondent states that, although the Disputed Domain Name is currently inactive, Respondent plans to formally launch his website and business soon, and that the "Launching Soon" landing page is a default option provided by GoDaddy.com, LLC for sites that do not yet have hosted content. Respondent's mock website shows the services that Respondent intends to offer, which includes "cleaning services for technical gear."  Respondent certifies that he has no intention to sell the Disputed Domain Name, has no pattern of misconduct related to domain names or domain name disputes, and is making "real efforts" to create a formal website for a laundry service.

 

FINDINGS

The following facts are undisputed and are supported by the record:

 

Complainant is an outdoor equipment company that sells outdoor products such as backpacks, pouches, packing systems, canoe gear, ropes and haul systems, tactical gear, and accessories. Complainant owns and operates a website at www.granitegear.com, through which Complainant sells its products internationally.

 

In 1986, Complainant first used the name "GRANITE GEAR" in connection with the sale of its products. In 2005, Complainant first used the "GRANITE GEAR" design mark in connection with the sale of its products.

 

In 2010, Complainant filed two applications to register "GRANITE GEAR" with the United States Patent and Trademark Office ("USPTO") for products including backpacks, luggage, tote bags and wallets. Both trademark applications (one in standard characters and one in design form) disclaim any exclusive rights in "GEAR," apart from the mark as a whole. On July 5, 2011, the USPTO issued the requested registrations.¹  Complainant renewed these registrations in 2021.

 

Over the past few decades, Complainant's products have gained recognition and have won multiple awards for excellence in design and construction.

 

Respondent, who is located in Massachusetts, registered the Disputed Domain Name on October 4, 2023. The Disputed Domain Name currently resolves to a landing page that says "Launching Soon," and provides an option for users to enter an e-mail address to subscribe to updates.

 

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 the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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

Complainant owns two federal trademark registrations for GRANITE GEAR. These registrations serve as prima facie evidence of the marks' validity. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2.1 ("Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.").

 

The Disputed Domain Name is confusingly similar to Complainant's registered word trademark. The Disputed Domain Name incorporates the GRANITE GEAR trademark in its entirety. WIPO Overview 3.0, section 1.7 ("[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing").

 

The addition of the word "LABS" in the Disputed Domain Name does not prevent a finding of confusing similarity. WIPO Overview 3.0, Section 1.8 ("Where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element").

 

Respondent's argument that the Disputed Domain Name is not confusingly similar to Complainant's trademark because Respondent seeks to operate in a different business misunderstands the first element of the Policy. The first element looks only at the similarity of the relevant domain name(s) and the relevant trademark(s); it does not consider how the domain name(s) and mark(s) are used in the marketplace (those are issues that are addressed in the second and third elements of the Policy). See WIPO Overview 3.0, section 1.7 ("The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the Disputed Domain Name.")

 

The Panel therefore finds that Complainant has satisfied its burden of showing that the Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights and has therefore satisfied the first element of the Policy.

 

Rights or Legitimate Interests

Once a complainant makes a prima facie showing that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to provide evidence demonstrating rights or legitimate interests in the disputed domain name. However, the burden of proof always remains on the complainant. WIPO Overview 3.0, section 2.1.

 

Here, Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the Disputed Domain Name. However, Respondent has come forward with evidence to rebut that showing – namely, evidence that he made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of laundry services prior to notice of the dispute.

 

The evidence Respondent offers is thin – it includes two Apple Notes documents dated September 23, 2023 and October 3, 2023. The September 23, 2023 Apple Notes document contains a list of 39 "Laundry Company Names," which includes the name "Granite Gear Lab."  The October 3, 2023 Apple Notes document contains five rough sketches of blue "G" and "GL" logos. In addition, Respondent offers screenshots of a mock website trial he conducted on Squarespace, where the "Dashboard" indicates the trial expired on October 21, 2023. Respondent states that he developed an "economic model" for his business, but has not submitted that to the Panel for review.

 

Although the documentary evidence is limited, Respondent has certified the truthfulness of his claim that he intends to use the Disputed Domain Name for a laundry service, and the evidence Respondent has submitted corroborates that claim. In the absence of evidence from Complainant challenging the accuracy of these assertions, the Panel finds that Complainant (who bears the burden of proof) has failed to establish that Respondent has not made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of services.

 

The Panel has considered whether Respondent's use of the Disputed Domain Name for a proposed laundry service necessarily infringes Complainant's trademark rights, which would take it outside of being a bona fide offering. See On AG, On Clouds GmbH v. Nguyen Luu et al., WIPO Case No. D2021-1714 ("a use cannot be deemed bona fide if the disputed domain names constitute trademark infringement"). Given that Respondent's planned service seems to be focused on cleaning apparel, rather than on cleaning the kind of outdoor equipment sold by Complainant, this is not an obvious case of infringement (though it also is not obviously not infringing). Complainant (who bears the burden of proof) has not offered any evidence that would show that confusion is likely. On the record presented, Complainant has not established by a preponderance of the evidence that Respondent's use of the Disputed Domain Name is likely to constitute trademark infringement That said, nothing in this decision is intended to prevent Complainant from asserting claims for trademark infringement in court if Respondent's actual use of the Disputed Domain Name or the Granite Gear Lab name causes confusion or otherwise violates Complainant's trademark rights, nor is this decision intended to prevent Complainant from filing a new UDRP complaint if Respondent changes the nature of his planned use or fails to execute on the planned use within a reasonable period of time.

 

Complainant separately argues that, because the Disputed Domain Name resolves to an inactive website, Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. That argument might have some force if Respondent had registered the Disputed Domain Name years ago, and never followed through on his plans, but here, Respondent has shown that he has taken affirmative steps to design and launch a business in the months following registration of the Disputed Domain Name. On this record, that is enough for Respondent to establish the kind of demonstrable preparations that are sufficient to defeat a claim that the Disputed Domain Name is not in use and therefore its use cannot be bona fide. WIPO Overview 3.0, section 2.2 ("[N]on-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: . . . (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan . . . and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent.")

 

The Panel accordingly finds that Complainant has failed to prove by a preponderance of the evidence that Respondent lacks rights or legitimate interests in the Disputed Domain Name.

 

Registration and Use in Bad Faith

To prove bad faith, Complainant largely relies on its ownership of registered marks, and argues that the Disputed Domain Name's wholesale copying of the GRANITE GEAR trademark is itself evidence that Respondent registered the Disputed Domain Name to trade off the reputation and goodwill of Complainant's marks.

 

In response, Respondent certifies that he was unaware of Complainant's marks prior to notice of the dispute. If true, that would be sufficient to show that Respondent did not register the Disputed Domain Name with a bad faith intent to take advantage of Complainant and/or its trademarks, or to disrupt Complainant's business. That is true even though Complainant's marks are registered, and thus constitute "constructive notice" under U.S. trademark law. Akamai Technologies, Inc. v. Cloudflare Hostmaster / Cloudflare, Inc., Forum Claim Number: FA2201001979588 (constructive knowledge is insufficient to demonstrate bad faith").

 

On this record (which is admittedly limited given the absence of discovery between the parties and the absence of live testimony, at which the Panel could make credibility determinations), the Panel is inclined to credit Respondent's assertion. Although Complainant may be well known in the outdoor equipment industry, and its accolades in that market are impressive, Complainant has not adduced evidence to prove that its reputation likely extends beyond the outdoor equipment industry such that parties like Respondent would necessarily be aware of Complainant and its trademarks. Complainant has not, for example, shown that Respondent is one of its customers, that Respondent is a regular purchaser of the types of outdoor equipment that Complainant sells, that Complainant regularly advertises in publications read by Respondent, that Respondent intends to compete with Complainant (and therefore would more likely be aware of brand names in the outdoor equipment category), or that Complainant or its brand are so famous that they are common household names known by virtually all consumers in the United States marketplace. See generally WIPO Overview 3.0, section 3.2.2 ("[W]here the complainant's mark is not inherently distinctive and it also corresponds to a dictionary term or is otherwise inherently attractive as a domain name (e.g., it is a short combination of letters), if a respondent can credibly show that the complainant's mark has a limited reputation and is not known or accessible in the respondent's location, panels may be reluctant to infer that a respondent knew or should have known that its registration would be identical or confusingly similar to the complainant's mark.")

 

Complainant further argues that, because the Disputed Domain Name leads to an inactive landing page, Respondent's conduct constitutes "passive holding," which supports a finding of bad faith use. In order to assess whether passive holding can give rise to a finding of bad faith, panels generally consider a totality of circumstances, including: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3.

 

Although Complainant and its marks have gained recognition in the outdoor equipment industry, Complainant has not submitted evidence that could establish that it is a famous, household name. Factors (ii), (iii), and (iv) similarly counsel against a finding of passive holding. Respondent has submitted plausible evidence of its contemplated good-faith use of the Disputed Domain Name, and Respondent has not attempted to conceal his identity or contact details during this dispute (other than through the now-standard use of proxy services when registering domain names).

 

In sum, although a more robust discovery process might shed light on the sufficiency of Complainant's allegations and Respondent's business plans, the Panel finds, on the record before it, that Complainant has failed to establish that Respondent registered and used the Disputed Domain Name in bad faith.

 

DECISION

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 <granitegearlab.com> domain name REMAIN WITH Respondent.

 

 

David H. Bernstein, Sole Panelist

Dated: December 7, 2023