DECISION

 

Jarrad Hewett v. faris Al-Maliki

Claim Number: FA2502002140214

 

PARTIES

Complainant is Jarrad Hewett ("Complainant"), represented by Tynia A. McQuigg of Silverline Legal, PLLC, Oklahoma, USA. Respondent is faris Al-Maliki ("Respondent"), Saudi Arabia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jarradhewett.com>, 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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 14, 2025; Forum received payment on February 14, 2025.

 

On February 14, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <jarradhewett.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 February 17, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2025 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@jarradhewett.com. Also on February 17, 2025, 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 March 11, 2025, 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 asserts trademark rights in the personal name, JARRAD HEWETT, and alleges that the disputed domain name is identical to the trademark.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant is an American author and voice actor;

2.       the disputed domain name was registered on May 25, 2005, and used until recently in connection with a website promoting Complainant;

3.       starting in January 2025, a third party appears to have fraudulently usurped ownership of the domain name;

4.       on or about February 6, 2025, Complainant lost control of the domain name which was then registered with the current Registrar and transferred into the name of Respondent; 

5.       prior to those transfers Complainant received an anonymous message that a third party had control of the domain name and the resolving website material and Complainant had 24 hours to pay USD10,000.00 or the domain name would be auctioned to the highest bidder and the website material deleted; and

6.       currently, the disputed domain name resolves to a webpage stating that that the name is "For Sale at Auction".

 

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.

 

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.

 

The domain name is legally identical to the name, "Jarrad Hewett", (see, for example, ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) ("Neither the addition of country code top-level domains, i.e., '.co.,' '.de,' '.cr,' '.es,' nor the insertion of a gTLD has a distinctive function"); Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Forum Nov. 16, 2009) holding that even after the "addition of a ccTLD the disputed domain name is still identical to Complainant's mark."); Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) ("The Panel also finds that Respondent's <abt.com> domain name is identical to Complainant's ABT mark since addition of a generic top-level domain ("gTLD") is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.")). The principal issue is whether Complainant's name is a trademark in which he has rights.

 

The Complaint makes no explicit claim to either registered or common law trademark rights. 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 June 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).")). It appears that on February 11, 2025, Complainant filed United States Patent and Trademark Office trademark application 99036437 for JARRAD HEWETT. However, this is no evidence of a registered trademark. Nonetheless, paragraph 4(a)(i) of the Policy 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.").

 

Proof of such common law trademark rights involves, in this case, two enquiries, best explained by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview") as follows:

 

1.5 Can a complainant show UDRP-relevant rights in a personal name?

The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant's goods or services.

 

Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint.

 

1.3 What does a complainant need to show to successfully assert unregistered or common law trademark rights?

To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services.

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant's goods and/or services.)

Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. …

The fact that a respondent is shown to have been targeting the complainant's mark (e.g., based on the manner in which the related website is used) may support the complainant's assertion that its mark has achieved significance as a source identifier. Even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark rights, the strength of the complainant's mark may be considered relevant in evaluating the second and third elements.

 

Complainant provides a declaration describing himself as:

 

… a multi-dimensional energy expert who specializes in visionary teaching and remote healing energy work that allows reconnection and healing at every level of being. He is a bridger of consciousness, an awakener of souls, and a catalyst for high level vibrational change that has brought about quantum growth, abundance, healing, and instantaneous change and manifestation in the lives of millions of clients across the globe.

 

More particularly, Complainant states that in 2006 he started offering voice acting entertainment services and in 2007 began a writing career, claiming to have sold more than 350,000 copies of his books to date.  Further, that since 2012 he has offered educational sessions focused on energy and healing via phone, internet, and in person to consumers via the website which until this year resolved from the disputed domain name. Complainant alleges that he has over 14,000 followers on Facebook and over 6,000 subscribers on YouTube and has sold more than USD800,000 annually in classes, workshops, coursework, books, curriculum and other educational services.

 

There is some evidence in support of some of those claims. In terms of paragraph 1.5 of the WIPO Overview, there is just enough to suggest that Complainant is known within certain circles of interest in the United States.

 

Whether Complainant's name acts as "a trademark-like identifier in trade or commerce" is another question.  The Panel struggles to identify the services which might be provided by "a multi-dimensional energy expert" but accepts that Complainant's published works aim to provide educational or self-development programs (see, for example, Philippe Pierre Dauman v. Dinner Business, WIPO Case No. D2013-1255).

 

On balance, the Panel finds that the evidence presented is just enough to support common law trademark rights in JARRAD HEWETT. The Panel therefore finds that Complainant has shown trademark rights in a term which is identical to the disputed domain name. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Notwithstanding the absence of a Response, Complainant must nevertheless make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624). Since transfer of the name away from Complainant there has been no use of it. Furthermore, it has been offered for sale.  The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name (see, for example, 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) holding that "a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests" in a disputed domain name; Am. Nat'l Red Cross v. Domains a/k/a Best Domains a/k/a John Barry, FA0301000143684 (Forum Mar. 4, 2003) ("Respondent's lack of rights and legitimate interests in the domain name is further evidenced by Respondent's attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.")).

  

The onus shifts to Respondent to rebut that case by demonstrating rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, op. cit.). Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

'(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has 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, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.'

 

The Panel finds that a compelling inference can be drawn that Respondent's conduct falls under paragraph 4(b)(i) above. The offer to sell the domain name back to Complainant for UAD10,000 is a price far exceeding any acquisition costs. In terms of the Policy, the Panel finds that Respondent registered or acquired the domain name primarily for the purpose of selling it to Complainant for consideration in excess of Respondent's out-of-pocket costs directly related to the domain name (see, for example, Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent's bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).).

 

The Panel finds that the third and final element of the Policy is satisfied.

 

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 <jarradhewett.com> domain name be TRANSFERRED to Complainant. 

 

 

 

Debrett G. Lyons, Panelist

Dated: March 12, 2025