DECISION

 

Evensun Consulting, LLC v. web master / Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace***

Claim Number: FA2409002114469

 

PARTIES

Complainant is Evensun Consulting, LLC ("Complainant"), represented by Wesley Sanders, Georgia, USA. Respondent is web master / Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** ("Respondent"), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <evensunhealth.com>, registered with Dynadot.

 

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 6, 2024; Forum received payment on September 6, 2024.

 

On September 9, 2024, Dynadot confirmed by e-mail to Forum that the <evensunhealth.com> domain name is registered with Dynadot and that Respondent is the current registrant of the name. Dynadot has verified that Respondent is bound by the Dynadot 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 9, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@evensunhealth.com. Also on September 9, 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 October 1, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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's first used the service mark, Evensun Health, on January 5, 2023. On May 6, 2024, Complainant filed trademark application number 98532287 with the US Patent & Trade Mark Office ("USPTO"), for Evensun Health.  Complainant submits that the disputed domain name is identical to the trademark.

 

Complainant submits that it can find no evidence of any other entity doing business under the name, Evensun Health, and no evidence that the domain name has been used for any bona fide offering of goods or services. Complainant submits that Respondent has no rights or legitimate interests in respect of the domain name.

 

Complainant states that the disputed domain name was purchased by Respondent on May 3, 2024, the same day Complainant made a USPTO application for the trademark and that Respondent now has the domain name for sale for USD 2,850.  Complainant submits that Respondent acquired the domain name primarily for the purpose of selling it to Complainant for consideration in excess of its out of pocket costs.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The only pertinent factual findings in this case are that Complainant has a pending application for trademark registration and has made an unsupported claim to use of that trademark since January 2023.

 

DISCUSSION

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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding based on 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.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) ("Complainant's registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).").

 

Complainant provides evidence of pending application serial number

98532287 before the USPTO for registration of EVENSUN HEALTH. The Panel notes that this application has not so far matured to registration and so cannot form the basis for trademark rights for the purposes of paragraph 4(a)(i) of the Policy.

 

Paragraph 4(a)(i) does not distinguish between registered and unregistered trademark rights and UDRP panels have found that a governmental registration is not required so long as a complainant can establish common law rights (see, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) finding that "The Policy does not require a complainant to own a registered trademark prior to a respondent's registration if it can demonstrate established common law rights in the mark.").

 

Common law rights may be established through proof of use and public recognition of the trademark such that it has come to acquire secondary meaning (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, #1.3: "What does a complainant need to show to successfully assert unregistered or common law trademark rights?"). There is no such proof in this case, merely an unsupported assertion that the trademark had been used since the start of 2023. Without more, there is nothing to sustain a finding of common law trademark rights.

 

The Panel therefore finds that Complainant has failed to show trademark rights in a term which is either identical or confusingly similar to the disputed domain name. Accordingly, the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

No findings required (see, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant's failure to prove one of the elements makes further inquiry into the remaining element unnecessary); Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent's rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

 

Registration and Use in Bad Faith

No findings required for the same reason.

 

DECISION

Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <evensunhealth.com> domain name REMAIN WITH Respondent.

 

 

 

Debrett G. Lyons, Panelist

Dated: October 2, 2024