Grey Global Group LLC v. i-content Ltd. et al.

Claim Number: FA1606001681062






Appellant (hereinafter referred to as “the Complainant”): Grey Global Group LLC of New York, New York, United States of America.


Appellee (hereinafter still referred to as “the Respondent”): i-content Ltd. of Berlin, Germany.



Registries: Spring Madison, LLC

Registrars: GoDaddy.com, LLC



The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.


Mr. Peter Müller, as Examiner.



Complainant submitted: June 24, 2016

Commencement: June 27, 2016

Response Date: July 8, 2016

Appeal submitted: July 14, 2016

Appeal Response submitted: July 27, 2016


Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").



The Complainant request the overruling of the Final Determination and the Remedy ordered and to suspend the Domain Name for the life of the registration.



Clear and convincing evidence.



URS Procedure 12.1 provides that each party shall have the right to seek a de novo appeal of the Determination based on the existing record within the URS proceedings. The appellant must identify the specific grounds on which the party is appealing.


Grounds of Appeal:

Complainant’s grounds of appeal are as follows:

1.    The Complainant states that the Examiners’ statement “The American trademark GREY No 2469398 on which the complaint is based is in the name of the American company Grey Global Group Inc (Delaware Corporation), whereas the complaint is filed in the name of the American company Grey Global Group LLC. There is no explanation on this difference.” is incorrect. It states that the trademark is in fact registered to the Complainant and that the Examiner failed to note the assignment from Grey Global Group Inc. to Grey Global Group LLC that was filed on November 7, 2013 following the change of Complainant’s corporate name. The Complainant further states that the USPTO has failed to update its records to show this change in corporate name in its database.

2.    The Complainant states that it attempted to explain these circumstances in an email sent to the case manager on July 8, 2016, but the case manager did not provide this communication to the Panel.

3.    The Complainant further contends that on the date the Complaint was filed, it had no way of knowing how the Respondent intended to use the Domain Name. However, after reviewing the Response filed by Respondent’s counsel, it appears to the Complainant that the Domain Name is designated as one of many domains to be used in connection with an illegitimate email service.


Reply of Appeal:

1.    With regard to the Complainant’s trademark rights, the Respondent argues that it is the Complainant’s sole responsibility to prove ownership in the trademark registration on which the Complaint is based.

2.    The Respondent’s further argues that the planned use of the Domain Name is legitimate as the Domain Name is generic.

3.    Finally, the Respondent states that it did not receive any warning from the Trademark Clearinghouse before registering the Domain Name.


Findings of fact and law:

URS Procedure 1.2.6, requires the Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.


[URS] The registered domain name is identical or confusingly similar to a word mark:

(i) for which the Complainant holds a valid national or regional registration and that is in current use; or

(ii) that has been validated through court proceedings; or

(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.


The Complainant has not provided any evidence regarding the change of its name with the Complaint.


URS Procedure 8.3 reads as follows:

“This means that the Complainant must present adequate evidence to substantiate its trademark rights in the domain name (e.g., evidence of a trademark registration and evidence that the domain name was registered and is being used in bad faith in violation of the URS).”


URS Procedure 9.1 reads as follows:

“the evidence will be the materials submitted with the Complaint and the Response, and those materials will serve as the entire record used by the Examiner to make a Determination.”


Under such circumstances, the Examiner finds that the Complainant’s email communication of July 8, 2016 is not part of the case record and that the Examiner had no obligation to make additional investigations. As a result, the evidence was not clear and convincing that the Complainant holds a valid national or regional word mark, as the named Complainant differed from trademark owner and as the Complainant failed to provide any explanation on this difference with the Complaint.


However, the Complainant provided new evidence with regard to the change of its company name with the Appeal.


URS procedure 12.1 reads as follows:

“A limited right to introduce new admissible evidence that is material to the Determination will be allowed upon payment of an additional fee, provided the evidence clearly pre-dates the filing of the Complaint.”


Given that the Complainant did pay the additional fee to introduce new admissible evidence under URS Procedure 12.2, the Examiner may take such evidence into account.


Based on the evidence now available to the Examiner, the Examiner finds that the Complainant provided documentary evidence that it is inter alia registered owner of the US trademark registration no. 2,469,398 GREY, which was registered on July 17, 2001 for various goods in class 35, as well as documents to show that the trademark is in current use.


The disputed domain name fully incorporates the Complainant’s GREY Mark and is identical to such mark, as the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.


The Examiner finds that the disputed domain name is confusing similar to the GREY Mark and that the Complainant satisfied the elements of URS Procedure


[] The Registrant has no legitimate right or interest to the disputed domain name.


The Complainant argues that the Respondent has no legitimate right or interest to the disputed domain name, as the Complainant has never granted any license or other permission to the Respondent to use the GREY mark, as the Respondent has not been authorized by the Complainant to register or use any domain name incorporating the GREY mark, as the Respondent is not named or commonly known as GREY, and as the Respondent has no connection to the Complainant, its goods or services.


The Respondent states that it intends to use the disputed domain name in connection with an email service, offering individuals, enterprises and organizations the possibility to create and use individual email addresses on basis of generic domain names registered in the new Top-Level-Domain names, especially in the “.email” TLD, and that it registered numerous generic domain names for use in connection with such service, inter alia <dance.email>, <service.email>, <martin.email>, and <white.email>. This raises a question as to whether the proposed use will be a legitimate fair use under URS Procedure and the Complainant has, in the Examiner’s opinion, not met its “clear and convincing” burden of proof with respect to this element of the procedure. In sum, this is not a clear case of trademark abuse, URS Procedure 8.5, and the planned use of the Respondent does not seem to be illegitimate per se. See Stuart Weitzman IP, LLC v. yoyo.email et al., FA 1554808 (Forum, June 24, 2014); See also Banco Bilbao Vizcaya Argentaria, S.A. v. Gandiyork SL et al., FA 1548656 (Forum, March 28, 2014).


However, in the light of the Examiner’s finding below, it is not necessary for the Examiner to come to a decision in this regard.


[] The disputed domain name was registered and is being used in bad faith.


The Complainant states that he has used GREY as a service mark in connection with advertising agency, marketing, branding, promotional, and related services since 1917 and that it owns trademark registrations in over 40 countries and jurisdictions, including Europe.


The Respondent, on the other hand, states that it registered the Domain Name because “grey” is a dictionary word and a purely descriptive term and also a common family name and intends to use it in connection with an email service.


Given that the Domain Name in fact corresponds to a generic term, that the Respondent has registered numerous similar generic domain names, such as <white.email>, <martin.email>, <hans.email>, or <one.email>, that the Domain Name was used in connection with a parking website with sponsored links using the term “grey” solely in a descriptive way and not in connection with the Complainant’s services, and that the Complainant has not provided evidence as to its business activities in Germany, where the Respondent is located, the Examiner finds that the evidence is not clear and convincing that the domain name was registered in bad faith. Given that the URS is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse, the Examiner finds that the Complainant has not satisfied the elements of URS Procedure



No abuse or material falsehood.



After reviewing the parties’ submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent.





Mr. Peter Müller, Examiner

Dated: August 10, 2016




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