Walker Edison Furniture Company LLC v. WARNE, MARTIN
Claim Number: FA1804001784459
Complainant is Walker Edison Furniture Company LLC (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is WARNE, MARTIN (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <forestgate.com>, registered with Network Solutions, LLC.
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.
M. Kelly Tillery, Esquire as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2018; the Forum received payment on April 30, 2018.
On May 1, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <forestgate.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 May 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2018 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 May 4, 2018, 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.
A timely Response was received and determined to be complete on May 14, 2018.
On May 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed M. Kelly Tillery, Esquire as Panelist.
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.
Complainant requests that the domain name be transferred to it.
Complainant, Walker Edison Furniture Company LLC, is aa U.S. based innovative home décor and ready-to-assemble furniture manufacturer. Complainant uses its FOREST GATE mark to promote its products and services and established rights in the mark through its pending application with the United States Patent and Trademark Office (“USPTO”) (e.g., App. No. 87,881,043, filed Apr. 17, 2018). Complainant also has common law rights in the FOREST GATE mark. Respondent’s <forestgate.com> domain name is identical and/or confusingly similar to Complainant’s FOREST GATE mark because it merely adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <forestgate.com> domain name. Respondent is not licensed or authorized to use Complainant’s FOREST GATE mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert Internet users to a website that features unrelated, pay-per-click hyperlinks.
Respondent registered and is using the <forestgate.com> domain name in bad faith. Respondent uses the domain name to disrupt Complainant’s business by diverting users to a website featuring pay-per-click hyperlinks that are unrelated to Complainant’s furniture business. Additionally, Respondent failed to actively use the disputed domain name for nearly ten (10) years. Furthermore, at the commencement of these proceedings, Respondent attempted to hide the disputed domain name by forwarding users to a confusingly similar domain name, <forestgate.net>.
Respondent claims Complainant does not have rights in the FOREST GATE mark because Complainant’s pending USPTO Application is insufficient to establish rights under Policy ¶ 4(a)(i). Moreover, Respondent’s registration of the disputed domain name predates Complainant’s earliest claimed rights in the FOREST GATE mark by nearly seven (7) years.
Respondent originally used the domain name to resolve to a website featuring information about his U.K. residential district, Forest Gate. Since 2008, Respondent has used the disputed domain name primarily in connection with a personal email address and to redirect Internet users to a local news and politics blog.
Respondent did not register the domain name in bad faith. Respondent had no knowledge of Complainant’s existence prior to this UDRP proceeding. Further, Complainant has engaged in reverse domain name hijacking by filing this claim.
The <forestgate.com> domain name was registered on May 21, 1999.
1) Complainant has not met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent's Domain Name is identical or confusingly similar to a Trademark in which Complainant has rights.
2) The Panel need not make any findings on the issue of rights or legitimate interest in respect of the Domain Name.
3) The Panel need not make any findings on the issue of whether domain name has been registered and is being used 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 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
No Rights In Trademark
Complainant claims to have rights in the FOREST GATE mark through its pending USPTO Application. However, pending USPTO applications do not confer rights in a mark under Policy ¶ 4(a)(i). See Imagine Nation Books Ltd. v LEE, LAWRENCE, FA 1662128 (Forum Mar. 31, 2016) (“Complainant’s only assertion of rights in the mark stem from a trademark application and the statement that Complainant offers ‘services and goods under the name Collective Goods’… [and] pending trademark applications do not establish rights in a mark under Policy ¶ 4(a)(i).”). See ValueVapor LLC v. Vicki Oxman, FA 1542157 (Forum Mar. 20, 2014) (denying Complainant’s rights under Policy ¶ 4(a)(i) as “[t]here is no evidence of a registered trademark and it has long been held that a pending application for registration is not sufficient to prove trademark rights.”).
The Panel finds Complainant’s pending USPTO Application does not establish rights in the FOREST GATE mark per Policy ¶ 4(a)(i).
Complainant also claims to have rights in the FOREST GATE mark under the common law. Common law rights can be sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights may be established through evidence of longstanding and widespread use, evidence of an identical domain name, media recognition, and promotional material and advertising. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (Complainant established common law rights in MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant claims that it substantially invested in marketing its FOREST GATE mark and that it has built a significant amount of goodwill, but fails to state when it began such use or to provide any evidence of the nature and/or extent and/or geography of use. The USPTO Application was filed just 13 days before the Complaint filed herein. And Complainant did not provide a copy of the Application or any other evidence of date of First Use in Commerce. Accordingly, the Panel finds that Complainant has failed to establish common law rights in the FOREST GATE mark per Policy ¶ 4(a)(i).
Domain Name Registration Predates First Use of Claimed Mark
Respondent argues that its registration of the <forestgate.com> domain name predates Complainant’s earliest known rights in the FOREST GATE mark. Specifically, Respondent states that the disputed domain name was registered in 1999, while Complainant’s business was not founded until 2006, nearly seven (7) years later. Respondent provided documentation that Complainant formed its business in 2006, which Complainant has not disputed. However, the mark claimed is not the name of Complainant, so there is still no evidence of record of First Use of the mark or nature and extent of such use. Predating a complainant’s earliest known claim of rights in a mark may support a finding that complainant has no rights in a mark per Policy ¶ 4(a)(i). See Twin Lakes Telephone Cooperative Corporation v. DNS ADMIN / BEST WEB LIMITED, FA 1725012 (Forum May 23, 2017) (complainant failed to establish rights in the TWIN LAKES COMMUNICATION marks for purposes of the policy, because registration of respondent’s domain name predated registration of complainant’s mark by approximately five years). Therefore, the Panel finds Respondent’s disputed domain name predates Complainant’s earliest claimed rights in the FOREST GATE mark under Policy ¶ 4(a)(i).
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), and thus declines to analyze the other two elements of the Policy. See 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); see also 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)).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <forestgate.com> domain name, of its rights to use the disputed domain name. The Panel finds that Complainant knew or should have known that it was unable to prove its claim. The Panel finds there is sufficient evidence to this effect, and finds that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. The Panel also concludes that Complainant has engaged in Reverse Domain Name Hijacking.
Accordingly, it is Ordered that the <forestgate.com> domain name REMAIN WITH Respondent.
M. KELLY TILLERY, ESQUIRE Panelist
Dated: May 23, 2018
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