Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd.
Claim Number: FA1703001721637
Complainant is Netsertive, Inc. (“Complainant”), represented by Rebecca S. Winder of Williams Mullen, Virginia, USA. Respondent is Ryan Howard / Howard Technologies, Ltd. (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <netsertivesucks.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2017; the Forum received payment on March 14, 2017.
On March 15, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <netsertivesucks.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 March 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2017 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 firstname.lastname@example.org. Also on March 15, 2017, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On April 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, doing business from offices in Morrisville, North Carolina, USA, uses the NETSERTIVE mark to promote its business in the fields of advertising, digital marketing and related software services.
Complainant holds a registration for the NETSERTIVE service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,141,927, registered February 14, 2017, upon an application filed September 7, 2016).
Complainant also has common law rights in the NETSERTIVE mark in light of its continuous use in commerce since April of 2010 and its investment of time, effort and resources in the development of the mark.
Respondent, of Clyde, North Carolina, USA, and doing business under the name Howard Technologies, Ltd., registered the <netsertivesucks.com> domain name on August 20, 2016, by employing a “privacy” registration service.
The domain name is confusingly similar to Complainant’s NETSERTIVE mark.
Respondent has not been commonly known by the domain name.
Respondent registered the domain name without Complainant’s permission.
Respondent is not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The domain name diverts Internet users who are potential customers seeking Complainant to a website that criticizes Complainant and displays the message:
“Netsertive Sucks. Don’t waste your marketing dollars – Get recommendations on a better marketing agency.”
The same website hosts a button titled “Learn More” that takes the consumer to a page where he is asked to fill in his name, phone number and email address.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name creates a likelihood of confusion among Internet users, presumably for Respondent’s commercial gain.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent registered and is using the domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant has failed to show that Respondent registered the contested domain name in bad faith.
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 to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Where, however, the Complaint is deficient, the Panel need not do so.
Complainant has rights in the NETSERTIVE service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Charlotte Russe Merchandising, Inc. v. Private Registrations Aktien Gesellschaft, FA1204001439309 (June 6, 2012 Nat. Arb. Forum) (“The Panel finds Complainant has successfully established rights in its mark through its registrations with the USPTO.”); see also Nat’l Westminster Bank plc v. onlineco, FA0703000938025 (Nat. Arb. Forum May 2, 2007) (“Complainant has established rights in the … mark through registration with the USPTO.”); further see Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum February 18, 2004) (“Registration of the … mark with the USPTO establishes Complainant's rights in the mark.”).
On the facts presented in the Complaint, we have a doubt as to whether the contested <netsertivesucks.com> domain name can be described fairly as being confusingly similar to Complainant’s NETSERTIVE service mark. Nonetheless, in light of our finding on the question (below) as to whether Respondent registered the domain name in bad faith, we need not further consider the matter of confusing similarity.
We have found that Complainant has rights in the NETSERTIVE service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. However, Complainant’s rights in its NETSERTIVE mark by virtue of its USPTO registration are not senior in time to the registration of Respondent’s challenged <netsertivesucks.com> domain name. The domain name was registered on August 20, 2016, while the mark was registered later, on February 14, 2017, upon an application filed September 7, 2016). Thus, although it is appropriate to credit Complainant with rights arising from registration of its mark as of the date of filing of its registration application, Respondent’s registration of the disputed domain name precedes Complainant’s mark registration application filing date of September 7, 2016. In such circumstances, it cannot be said that Respondent registered the challenged domain name in bad faith because, insofar as the Complaint shows, Respondent would have had no reason to know of the existence of Complainant’s rights in the mark when it registered the domain name. See, for example, Francesca’s Collections, Inc. v. Blackstone Trust, FA 368315 (Nat. Arb. Forum March 9, 2011):
… Complainant’s rights in the mark date back only to January 9, 2008, the filing date of the … trademark registration. Respondent, however, registered the … domain name on June 16, 2004, at least four years prior to Complainant’s trademark registration. Accordingly, the Panel finds that Respondent’s predating registration of the disputed domain name indicates that Respondent did not register the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). [citation omitted]
Complainant attempts to rescue its position on the point of Respondent’s registration of the domain name in bad faith by asserting that Complainant acquired common law rights to the NETSERTIVE mark dating from April of 2010, a time prior to Respondent’s registration of the <netsertivesucks.com> domain name. However, the Complaint offers no evidentiary support for this proposition. And an assertion of common law rights in a mark that lacks evidentiary support fails to show a subsequent registration of a domain name in bad faith under Policy ¶ 4(a)(iii). Again, see Francesca’s Collections, Inc. v. Blackstone Trust, supra:
Complainant contends it has common law rights in the … mark dating back to 1999 when Complainant alleges it first engaged in commerce by using the … trademark. Complainant alleges it has continuously used the mark in commerce since that time, expending considerable economic resources in expanding its brand recognition …. The Panel finds, however, that Complainant has not provided evidence that would warrant a finding of common law rights prior to the registration of the domain name …. Moreover, Complainant has failed to show that Respondent had any awareness of Complainant’s business at the time the domain name was registered.
Because Complainant has failed to demonstrate that Respondent registered the contested domain name in bad faith, further inquiry into the issues presented by the Complaint is unnecessary. The reason for this is that the Policy requires Complainant to prevail on each of the three elements of Policy ¶ 4(a) in order to prevail in the proceeding as a whole. If, therefore, Complainant fails as to any one of them, it fails altogether. And, in that event, consideration of the Complaint may begin and end with examination of the element as to which Complainant has failed to provide proof upon which it can prevail. See, for example, Post.Com Limited v. Peter Neilson, D2002-0690 (WIPO September 17, 2002):
In this Panel’s view, the Complainant has not established … that the Domain Name was registered by the Respondent in bad faith [within the contemplation of Policy ¶ 4(a)(iii)] .... In the light of this finding the Panel does not need to consider paragraphs 4(a)(i) and (ii) of the Policy.
To the same effect, see also Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., D2010-0470 (WIPO May 19, 2010).
Therefore, Complainant having failed to establish one of the elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the <netsertivesucks.com> domain name REMAIN WITH Respondent.
Terry F. Peppard, Panelist
Dated: April 17, 2017
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