DECISION

 

Robert James v. Privacy Department / OrangeWebsite.com

Claim Number: FA2312002077227

PARTIES

Complainant is Robert James ("Complainant"), Texas, USA. Respondent is Privacy Department / OrangeWebsite.com ("Respondent"), Iceland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <badgemology.com>, registered with TLD Registrar Solutions Ltd..

 

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.

 

The Honorable Neil Anthony KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 31, 2023; Forum received payment on December 31, 2023.

 

On January 4, 2024, TLD Registrar Solutions Ltd. confirmed by e-mail to Forum that the <badgemology.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 January 8, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2024 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@badgemology.com. Also on January 8, 2024, 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 January 30, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony KC 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

     Complainant made the following contentions.

 

1.       Complainant is the owner of the International School of Gemology.

2.       Complainant has operated as an online gemology school for 20 years and operates the website at www.gemology.pro.

3.       On October 7, 2008, Complainant registered the domain name <gemology.pro> to provide educational courses in the academic field of gemology ("Complainant's domain name").

4.        Complainant's domain name is used by the International School of Gemology to conduct business through selling online and classroom education courses in the academic field of gemology through the internet.

5.       The International School of Gemology relies heavily of the fact that it owns the Complainant's domain name for customer identification of its education website and by that means it has built goodwill in its industry.

6.       On January 29, 2015, Respondent registered the <badgemology.com> domain name ("the disputed domain name").

7.       The disputed domain name is confusingly similar to Complainant's domain name. That is so because Respondent has added the word "bad" before the word "gemology" in the domain name.

8.       The disputed domain name was created for the sole purpose of interfering with Complainant's website at www.gemology.pro.

9.        Respondent has used the disputed domain name misleadingly to divert potential students away from the International School of Gemology to its competitors and to attack its website in derogatory terms by means of "posted insults and unsubstantiated accusations".

10.       Respondent has no rights or legitimate interests in the disputed domain name.

11.       Respondent has registered and used the disputed domain name in bad faith.

12.       Complainant therefore submits that the disputed domain name should be transferred from Respondent to Complainant.

 

B. Respondent

    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       On January 29, 2015, Respondent registered the <badgemology.com> domain name ("the disputed domain name").

2.       The Complainant has not asserted in the Complaint that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

3.       The Panel therefore has no jurisdiction pursuant to the Uniform Domain Name Dispute Resolution Policy over the dispute and no jurisdiction to conduct the proceeding.

4.       If, arguendo, the Panel has jurisdiction, the Complainant has not established by evidence that the dispute domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

5.       The Complaint is therefore denied and the disputed domain name should remain with the Respondent.

 

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: 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").

 

PRELIMINARY ISSUE: JURISDICTION

 

Jurisdiction in general

This proceeding is brought under the Uniform Domain Name Dispute Resolution Policy (the "Policy"). The first question that therefore arises is whether the Panel has jurisdiction over the proceeding that has been instituted under the Policy. If jurisdiction is established, a panel such as the present Panel is then required by Rule 10 of the Rules to conduct the proceeding to resolve the dispute. The Respondent has agreed in its registration agreement to be bound by the Policy but that is only within the jurisdiction conferred by the provisions of the Policy.

 

Jurisdiction is established under the Policy by determining if the Respondent is required to submit to the proceeding. That is done by considering paragraph 4 of the Policy. Paragraph 4 sets forth the type of disputes for which the Respondent is "required to submit to a mandatory administrative proceeding" which is the proceeding that is now before the Panel. That paragraph states that the Respondent is required to submit to the proceeding if  "a third party (a "complainant") asserts" each and every of three elements set out in the Policy with respect to the domain name in dispute.

 

The first of those three elements that must be asserted by the Complainant is that the domain name in question:

 

" … is identical or confusingly similar to a trademark or service mark in which the complainant has rights" (emphasis added).

 

That provision is set out in Paragraph 4(a)(i) of the Policy. It is that provision, requiring the Complaint to make the three assertions in question, that gives jurisdiction to the Panel. If there is jurisdiction, the Complainant is then required to "prove that each of these three elements are present" (emphasis added).

 

It will be seen that the relevant assertion that must be made is that the domain name is identical or confusingly similar "to a trademark or service mark in which the complainant has rights" (emphasis added).

 

The requirement of there being a trademark is thus pivotal to the jurisdiction of the Panel. If a trademark is asserted, there will, all other things being equal, be jurisdiction. If a trademark is not asserted, there will not be jurisdiction.

 

Two other points should be noted here. First, the trademark need not be a registered trademark; an unregistered or common law trademark is sufficient. Secondly, in answering the question whether jurisdiction has been established, and in answering all questions that arise in the proceeding, the Respondent is entitled to due process and the Panel must ensure that due process is followed. That is because the Respondent is entitled to know what is being alleged against it and the case that it needs to refute.

 

In the present case, the Complainant has clearly not asserted that it has a registered trademark, either in the United States Patent and Trademark Office ("USPTO"), in any of the State jurisdictions in the United States that issue trademarks, or in any other national or international trademark registration authority. As it has not asserted a registered trademark, the Complainant is therefore obliged to assert that it has rights in a common law trademark before jurisdiction can be established.

 

The Complainant's assertions

The question, then, is whether the Complainant has asserted that it has a common law trademark. The answer is that the Complainant has not made that assertion. The substance of its assertion in the Complaint is not that it has a trademark but that is has a domain name which is the domain name defined above as "Complainant's domain name", namely <gemology.pro>. This is seen from the facts that:

 

(a)       the Complainant devotes an entire page to the first element of whether the dispute domain name is identical or confusingly similar, but nowhere asserts that it is identical or confusingly similar to a trademark of any sort in which it has rights;

(b)       the Complainant in effect asserts something quite different, namely that the disputed domain name is confusingly similar to its own domain name, which is not what the Policy requires it to assert;

(c)       in that regard, the comparison that the Complainant makes throughout the Complaint is between the disputed domain name and the Complainant's own domain name, so there is no doubt that this is what the Complainant is asserting;

(d)       thus, the Complainant says, for example, that "The issue of similarity of domain names to confuse consumers and search engines is at the very forefront of intent of Respondent." (emphasis added).

(e)       with respect, the Complainant has misconceived the decision that it relies on in this regard, namely JBG/Lionhead, L.L.C. v. Shen Zhong Chao, Claim Number : FA1607001682938. The panelist in that case made it clear that the Complainant had a trademark and that the disputed domain name in that case was confusingly similar, not to a domain name of the Complainant, but to the Complainant's trademark which in that case, moreover, was a registered trademark with the USPTO. Indeed, the decision that the panelist relied on  to reach its conclusion in JBG/Lionhead, L.L.C. v. Shen Zhong Chao , was a case where the disputed domain name was confusingly similar to the Complainant's trademark and not to the Complainant's domain name. Thus the decision noted :  "See Warner Bros. Entm't Inc. v. Sadler, FA 250236 (Forum May 19, 2004) (finding the addition of generic terms to Complainant's HARRY POTTER mark in the respondent's <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names)" (emphasis added).

 

The Complainant has therefore not asserted that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. Thus, the Respondent is not required to submit to the proceeding and, that being so, the Panel has no jurisdiction over the Respondent and no jurisdiction to conduct the proceeding.

 

It should be said in fairness to the Complainant that it does make a passing reference to a "mark" and to the use of "the Gemology.pro long-established common-law trademark through posted insults and unsubstantiated accusations." However, neither of these submissions is an assertion that the Complainant has a common law trademark and there is no evidence of how or when any such common law trademark arose and how it has been proved. The Panel notes again that the substance of the Complainant's submissions is an assertion that the disputed domain name is confusingly similar to the Complainant's own domain name, not that it is confusingly similar to a trademark in which the Complainant has rights. That is not what the Policy requires to be asserted.

 

In any event, the difficulty with those allegations is that the Complainant asserts in effect that it does not own a trademark for "Gemology.Pro". That is seen from the website for www.gemology.pro where it is said in effect that any such trademark is owned not by the Complainant but by an entity named Global Claims Associates. That is revealed by the statement on the website that :

 

"StudyGems, ISG, GemologyPro, and Global Claims Associates are trademarks of Global Claims Associates and may not be used on any other website or business.( emphasis added)".¹

 

Moreover, under the requirements of due process, the Respondent is entitled to know, as a bare minimum, what trademark it is that is being asserted against it, when those trademark rights were acquired, by whom, and how those rights were acquired. There is nothing in the Complaint to give that information to the Respondent.

 

In the absence of such an assertion, the Panel finds that it does not have jurisdiction over the dispute or to conduct the proceeding.

 

However, for completeness, although not strictly necessary, the Panel will consider the consequences if, contrary to the Panel's finding, the Panel has jurisdiction over the dispute.

 

Identical or Confusingly Similar

Even if there were jurisdiction, and the Panel were to proceed to conduct the proceeding and adjudicate on the claim, it is clear that the Complainant has failed to prove the first of the three elements that it must prove under the Policy. That is so because paragraph 4 of the Policy includes the requirement that:

 

"In the administrative proceeding, the complainant must prove that each of these three elements are present."

 

If the Complaint relies on a common law trademark, as it must do because it has, on the evidence, no registered trademark, such a common law trademark must be proved by evidence. The only candidates for such a common law trademark that emerge from the Complaint are GEMOLOGY and GEMOLOGY.PRO. As the Panel has found, the Complainant has not claimed that it has a common law trademark in either term. But even if it had so asserted, it has not given any evidence that either expression is a trademark of the Complainant. In that regard, it must prove that it uses one or the other of the above two terms to identify its goods and services, that they distinguish its goods and services from those of others and that the relevant market has so recognized the alleged mark. The Complainant has offered no evidence to that effect.

 

In particular, the Complaint does not prove or even claim that GEMOLOGY or GEMOLOGY.PRO is a trademark of the Complainant. Rather, the Complaint seems to claim that they are names used not by the Complainant but by the "International School of Gemology." Thus, when the domain name <gemology.pro> is utilized, it resolves to the website of that entity. Indeed, that resolving website makes no reference to the Complainant other than two uses of his name as a contact name and addressee for the "International School of Gemology." It is true that the Complainant asserts that it owns the "International School of Gemology." But the Respondent is entitled to know who it is that allegedly owns any trademark that it raised against it, and the Complaint seems to be claiming that it is the "International School of Gemology", a separate entity.

 

Indeed, it is significant that the resolving website for <gemology.pro> actually claims that "ISG" and "GemologyPro" are trademarks of yet another entity named "Global Claims Associates" and not of the Complainant or the "International School of Gemology."² The Complainant can hardly establish that it has trademark rights in "GemologyPro" when it asserts on its own website that this is a trademark "of Global Claims Associates."

 

Finally, there are two other aspects that persuade the Panel that the Complainant has not shown on the balance of probabilities that it has a common law trademark, how it arose or when it arose. The first is that when the Complaint was filed, it must have known that there was an issue that was concerning the Respondent as to whether the Complainant had any standing in the use of  <gemology.pro>. That is so because the Complainant's Exhibit 4 shows the Respondent's  website for <badgemology.com> as it was before the Complaint was filed. Among other things, that website shows that, according to the Respondent, at least one member of the public had raised that very issue, stating that "…I'm just totally confused about this James guy and where I should look for educational resources." This must have alerted the Complainant to the need to prove by persuasive evidence that it was providing educational courses under the name Gemology or Gemology Pro, and that one or the other of them was a trademark of the Complainant, which it has not done.

 

The second aspect is that the Complainant knew how to prove a common law trademark and had done so successfully in a previous case. That is seen from the fact that it relies on a prior UDRP decision in YourGemologist, LLC v Domain Admin/Whois Privacy Corp., FA1411001590089. The Complainant says that the complainant in that proceeding was itself, the current complainant in the present proceeding, but presumably under a different corporate name. In that proceeding, as in the present proceeding, it had to establish a common law trademark, in that case in YOURGEMOLOGIST, as it had no registered trademark in that term. It went about this apparently in the normal way and satisfied the Panel by evidence that it had used the mark continuously and acquired common law trademark rights in it to provide the same services as it now claims that it provides under GEMOLOGY or GEMOLOGY.PRO. As the Complainant must therefore be seen as knowing how to prove a common law trademark, it is notable that it has not followed that requirement in the present case and has not sought to prove, and has not proven, that it has a common law trademark for GEMOLOGY or GEMOLOGY.PRO.

 

The totality of the evidence is therefore such that the Panel does not accept that the Complainant has shown that it has a common law trademark in either term.

 

That being so, the Complainant has not proved that the disputed domain name is confusingly similar to a trademark in which it has rights. It follows that the Complainant has not proved the first of the three elements that it must establish under Paragraph 4 of the Policy and accordingly the complaint cannot succeed.

 

In view of that finding it is not necessary or appropriate to discuss the other two elements.

 

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 <badgemology.com> domain name REMAIN WITH Respondent.

 

 

The Honorable Neil Anthony Brown KC

Panelist

Dated: February 1, 2024