Greencraft LLC v. Kim, James / Mediablue
Claim Number: FA1509001636762
Complainant is Greencraft LLC (“Complainant”), represented by Robert E. Richards, Georgia, USA. Respondent is Kim, James / Mediablue (“Respondent”), represented by Ari Goldberger of ESQwire.com, P.C., New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greencraft.com>, registered with Network Solutions, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as panelists in this proceeding.
Hon. Charles K. McCotter, Jr. (Ret.), Diane Cabell and Debrett G. Lyons.
Complainant submitted a Complaint to the Forum electronically on September 8, 2015; the Forum received payment on September 8, 2015.
On September 9, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <greencraft.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 September 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 2015 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 email@example.com. Also on September 15, 2015, 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.
After requesting and being granted an extension of time in which to do so, a timely Response was received and determined to be complete on October 12, 2015.
Complainant submitted a timely Additional Submission, which was received by the Forum on October 19, 2015.
On October 26, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Charles K. McCotter, Jr. (Ret.), Diane Cabell and Debrett G. Lyons (chair) as the Administrative Panel (the "Panel").
Having reviewed the communications records, Panel finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts trademark rights in GREENCRAFT and alleges that the disputed domain name is identical similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because the name is inactive.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith. In particular, Complainant alleges that the domain name has been used in bad faith by linking to Complainant’s competitors and unrelated third parties. Further, Complainant asserts that Respondent attempted to benefit financially from the sale of the domain name to Complainant for an amount in excess of out-of-pocket acquisition costs, the added value being attributable to the trademark.
Respondent made no response to Complainant’s assertion of trademark rights.
Respondent claims to have a right or legitimate interest in the domain name.
Respondent states that it is a reseller of generic domain names and that the domain name was acquired at auction for its generic character.
Respondent submits that it did not acquire or use the disputed domain name in bad faith because (i) prior to acquisition of the domain name Respondent had no knowledge of Complainant or its trademark and (ii) the use of the disputed domain name since acquisition has been by way of content added by the parking site operator hosting the domain name over which Respondent had no control.
C. Additional Submissions
As stated already, Complainant made additional submissions which have been taken into account by Panel and which are referred to as required in the Discussion which follows.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides building construction materials and services by reference to the trademark GREENCRAFT;
2. Complainant is the owner of United States Trademark Reg. No. 3,687,588, first use in commerce July 30, 2009, filed March 27, 2006, registered September 22, 2009, for the trademark GREENCRAFT;
3. there is some uncertainty as to the exact date but the disputed domain name was registered at least as early as May 2006;
4. on August 25, 2015 the domain name was acquired by Respondent, a domain name reseller;
5. the domain name is for sale;
6. when Complainant approached Respondent to purchase the domain name, Respondent asked for USD100,000; and
7. the domain name is parked and the parking webpage carries hyperlinks as later described.
Paragraph 15(a) of the Rules instructs 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration for GREENCRAFT, the Panel is satisfied that it has trademark rights (see Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003), finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i); State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. 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).”)).
Although Respondent made no submissions in relation to paragraph 4(a)(i) of the Policy, for the sake of completeness Panel notes here that the domain name was before first use of the trademark by Complainant (July 2009). UDRP panelists agree that this question of timing is an irrelevancy for the purposes of proof of trademark rights under paragraph 4(a)(i) of the Policy but in this case the timing is reset by Respondent’s acquisition of the domain name in August 2015 which becomes the date by reference to which any matters under paragraphs 4(a)(ii) and (iii) are determined.
Panel finds that the disputed domain name is legally identical to Complainant’s trademark (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
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
(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 trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The publicly available WHOIS information identifies Respondent as “Kim, James / Mediablue” and so there is no prima facie evidence that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights. The domain name is for sale and at the time of Complainant resolved to the webpage of a parking service provider. That webpage carried miscellaneous hyperlinks to “Craft Gifts,” “Foam Tape Craft,” “Mother Day Craft Gifts,” and one further link to services competitive with those offered by Complainant, namely, “Eco Green Building”. Such use does not show use of the domain name in connection with a bona fide offering of goods or services, nor legitimate noncommercial or fair use of it.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
Respondent contends that it is making a bona fide offering of goods or services because it is a reseller of generic domain names. It submits that the sale of domain names containing generic terms is a bona fide offering of goods or services. Respondent asserts that the words “green” and “craft” are generic.
In support of those claims is the declaration of Kwang Pyo Kim who states that he is the manager of Mediablue Inc. His relationship (if any) to Kim, James is not clear but Panel is prepared to accept his statement as made on behalf of Respondent.
In that declaration, Respondent disavows knowledge of Complainant’s business or trademark prior to acquisition of the disputed domain name on August 25, 2015. The declaration lists part of Respondent’s domain name stock and in particular lists of “green”-prefixed and “craft”-suffixed names, all said to be generic terms.
Panel accepts that Respondent is a domain name reseller and the reasoning of many panels that the business of registering and selling domain names for their generic value is a legitimate business practice protected under the Policy (see Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000); Front Range Internet, Inc. v. Murphy, FA 145231 (Nat. Arb. Forum Apr. 4, 2003); Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Mar. 9, 2007).
However, the issue here is not the legitimacy of Respondent’s business model but whether it has a legitimate interest in the disputed domain name. Put another way, the legitimacy of Respondent’s business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another. If that trademark is generic, it might say something of the bona fides of the domain name registrant for the purposes of paragraph 4(c)(iii) of the Policy, but the mere genericness does not create a legitimate interest in a domain name if it corresponds with the trademark of another.
In any event, Panel questions whether the disputed domain name is generic. In UDRP disputes there is frequent misdescription of words or terms as “generic” when what is meant is that the words are somehow non-distinctive. Putting that to one side, Panel accepts that in certain contexts the words “green” and “craft” might separately have generic meanings, but that does not mean their combination is a generic expression (whatever the context). Panel agrees with Complainant’s reasoning in its additional submissions that:
“Respondent improperly analyses the mark GREENCRAFT by dissecting it into its component part (sic). Respondent reasons that the word “green” has a meaning and the word “craft” has a meaning. However, it does not follow that the terms “greencraft” or even “green craft” have a recognized meaning.”
There is no evidence that either “greencraft” or “green craft” is a dictionary term. Panel does not find any compelling evidence that either “greencraft” or “green craft” or a commonly used descriptive word or phrase. Accordingly, Panel does not find that Respondent has a right or legitimate interest in the domain name.
Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being 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.’
Complainant argues for the application of paragraph 4(b)(i). In particular, Complainant argues that by offering to sell the domain name to Complainant for $100,000.00, a sum far in excess of Respondent’s out-of-pocket acquisition costs, Respondent has acted in bad faith.
Without making any findings, Panel prefers not to apply paragraph 4(b)(i) in this case since Respondent is a domain name reseller and its business depends on selling for a price higher than acquisition price. Further, paragraph 4(b)(i) would require Panel to speculate about Respondent’s state of mind at the time it acquired the domain name, which, on the evidence, was by way of inclusion in a bundle of unrenewed domain names sold at auction.
Instead, Panel finds that Respondent’s conduct falls squarely under paragraph 4(b)(iv) above. Paragraph 4(iv) is, as indicated, one of four per se examples of registration and use in bad faith. However, unlike paragraphs 4(b)(i)-(iii), it hinges on use in bad faith rather than registration in bad faith.
In terms of paragraph 4(b)(iv), Panel has already found the trademark and the domain name to be identical. Confusion is inevitable. Complainant contends and Respondent admits that use of the domain name is generating pay-per-click revenue and so use of the domain name is for commercial gain. Whether or not Respondent added the website content and links, it is nonetheless responsible for them. At least one link leads to the business of a competitor of Complainant. That use is in bad faith. Accordingly, Panel finds registration and use in bad faith under this subparagraph (see State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant has established the third and final element of the Policy.
One of the Panel, Diane Cabell, expressed a dissenting opinion. This panelist agrees with Respondent's view that the domain name is generically descriptive for items made for or using environmentally sensitive practices. Even Complainant's x701 registration emphasizes the company's "environmentally friendly building materials" indicating its own use of the term for that purpose. The term "green" is pretty widely recognized as an ecological descriptor. The links generated on Respondent's website all relate to "craft" or "ecology", so there is little to suggest that they were designed particularly to target the mark owner's customers. Further, Complainant's use of the mark is relatively recent (2009). There was no indication that Complainant's business activities have become so extensive that the mark would attract the attention of a distant foreign domain registrant or be viewed as well enough known as to drive significant traffic to the site. If registration is in good faith, then Respondent is free to ask whatever price he wishes, even of a mark owner. As both registration and use must be in bad faith, lack of bad faith registration causes the complaint to fail.
Having established all three elements required under the ICANN Policy, the majority of Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <greencraft.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Charles K. McCotter, Jr. (Ret.)
Debrett G. Lyons (chair)
Dated: November 4, 2015
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