Chrome Bones / CB Luxury Brands, LLC v. Laursen, Shawn / Shawn's pasta & bake shop
Claim Number: FA1805001787926
Complainant is Chrome Bones / CB Luxury Brands, LLC (“Complainant”), represented by Brad N. Sommer of Sommer Law Group, Pennsylvania, USA. Respondent is Laursen, Shawn / Shawn's pasta & bake shop (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chromebones.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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on May 22, 2018; the Forum received payment on May 22, 2018.
On May 22, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <chromebones.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 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of June 14, 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 25, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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. 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant has been a high-end, luxury pet product retailer since 2000. It has used the mark CHROMEBONES since 2000. The mark was registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,745,929) on June 2, 2015. Respondent’s <chromebones.com> domain name (the “Domain Name”) is virtually identical to Complainant’s CHROME BONES mark because it fully incorporates the mark, merely adding the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not authorized or licensed to use Complainant’s mark and is not commonly known by it or the Domain Name. Additionally, Respondent’s use of the disputed domain name does not qualify as a bona fide offering of goods and services or a legitimate noncommercial or fair use, as it only resolves to an inactive webpage.
Respondent registered and is using the Domain Name in bad faith. Respondent attempts to disrupt Complainant’s business by diverting Internet users to Respondent’s website. Respondent is using the Domain Name to create confusion with Complainant’s mark for commercial gain. Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CHROMEBONES mark. Finally, the fact that the Domain Name resolves to an inactive web site is further evidence of bad faith use and registration.
Respondent did not submit a Response in this proceeding.
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.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth 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) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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.”).
The Panel makes the findings set forth below with respect to the Domain Names.
Complainant registered the CHROMEBONES mark with the USPTO (Reg. No. 4,745,929) on June 2, 2015. See, Complaint Annex 4. This registration is sufficient to demonstrate Complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Domain Name is confusingly similar to Complainant’s mark, as it incorporates the mark verbatim, only adding the generic top-level domain (“gTLD”) “.com.” This change is insufficient to distinguish a domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i). Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) ( “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“Complainant also asserts that Respondent’s <researchnow.host>, <researchnow.top> and <researchnow.club> domain names are confusingly similar to Complainant’s mark because each merely eliminates the space and appends a gTLD to the fully incorporated mark. The addition of a gTLD and elimination of spacing are both considered irrelevant when distinguishing between a mark and a domain name.”).
Based upon the forgoing, the Panel finds that the Domain Name is confusingly similar to the CHROMEBONES mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(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 or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Complainant has not licensed or authorized Respondent to use its mark for any purpose, (ii) Respondent is not commonly known by the Domain Name, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because it resolves to an inactive web site. These allegations are supported by competent evidence. According to the WHOIS information submitted as Complaint Annex 8, the Domain Name is registered to “Shawn Laursen / Shawn’s pasta & bake shop,” which names bear no resemblance to the Domain Name. This is competent evidence that Respondent is not commonly known by the Domain Name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Further, Complainant states that it has never authorized Respondent to use its CHROMEBONES mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Additionally, the Domain Name resolves to a web site that currently contains the following message: “We’re working on making some major changes. Check back later. In the meantime check us out on social media.” See, Complaint Annex 9. Complainant alleges that previously the web site resolved to a blank page and was changed in 2016 to “fixing a few things” and was only changed to the current message a week before the Complaint was filed. Use of a domain name to resolve to an inactive website does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii). Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). An inactive web site has often been held to be evidence of a lack of rights or legitimate interests in the relevant domain name. George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Before addressing Complainant’s allegations with respect to Respondent’s alleged bad faith conduct, the Panel analyzes the evidence bearing upon the dates on which (i) Complainant acquired its trademark rights and (ii) Respondent registered the Domain Name. This is important because UDRP panels have consistently held that a respondent who registered the disputed domain name before the complainant acquired rights in the relevant trademark did not register the name in bad faith. WIPO Overview 3.0 ¶¶ 1.1.3 (“Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional circumstances would a complainant be able to prove a respondent’s bad faith.”) and 3.8 (“Subject to scenarios described in 3.8.2 below [dealing with domain names registered in anticipation of trademark rights], where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”), Mile, Inc v. Michael Burg, WIPO Case No. D2010-2011 (“Apart from unusual cases of a respondent's advance knowledge of a trademark, it is not logically possible for a respondent to register a domain name in bad faith contemplation of a mark that does not yet exist or of which the respondent is not aware.”).
The WHOIS information submitted as Complaint Annex 8 shows that Respondent registered the Domain Name on April 22, 2003. Complaint Annex 4 is an abstract referring to the mark CHROMEBONES (one word), USPTO Registration No. 4,745,929. It shows that the application filing date for this mark was June 5, 2013 and the registration date was June 2, 2015. It shows Complainant, CB Luxury Brands LLC, as the owner, and the date of first use in commerce as March 1, 2012. Complaint Annex 5 is an abstract referring to the mark CHROME BONES (two words), Registration No. 3,078,599. It shows that the application filing date for this mark was June 4, 2004 and the registration date was April 11, 2006. It shows one Adrian Beyaz, of Inglewood, California, as the owner, and the date of first use in commerce as October 10, 2001. Its current status is stated on Complainant Annex 5 as “Continued use not filed within grace period, un-revivable 11/16/2012.” There is no documentary evidence of any assignment of the 2006 registration to Complainant. The Complaint (at p. 7) relies on the October 2001 First Use date noted for the 2006 registration and states that “the trademark was subsequently purchased from the proceeding [sic] owner and re-registered under complainant after a partner buy-out,” but there is no information as to the date of this buy-out, and no indication as to whether that former partner was the Adrian Beyaz noted on Annex 5 as the owner of that registration. In short, there is no information about when or how Complainant might have acquired an interest in that registration. The Panel notes that the address shown for Mr. Bayez on Annex 5 is in Inglewood, California, while Complaint’s address is in Pittsburgh, Pennsylvania. Also curious, and more important, is the fact that while Complainant states that it “re-registered” that mark under its name, the Annex 4 registration notes a First Use date of March 2012, not October 2001. In short, there is no real evidence to support a finding that Complainant can claim any benefit from or rights in the 2006 registration. Complainant has thus failed to demonstrate that it acquired any rights in a registered trademark that preceded Respondent’s registration of the Domain Name.
Nevertheless, Complainant may establish rights in a mark under common law by showing use of an inherently distinctive mark in commerce or use of a descriptive mark in commerce that has acquired secondary meaning. Registration is not required to satisfy Policy ¶ 4(a)(i). Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (“A complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out”.), 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 in a trademark can be established by evidence of secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since “[a] mark can generate a secondary meaning sufficient to establish Complainant’s rights when consistent and continuous use of the mark has created distinctive and significant good will… Complainant has published under the KAREN KOEHLER name extensively, and Complainant’s legal skills have been recognized by various organizations and groups with extensive positive media coverage. Complainant also operates an online blog associated with the KAREN KOEHLER mark.”). The WIPO Overview 3.0, ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including “(i) the nature and duration 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.”
Complainant alleges that it “established rights in the mark as early as 2000 when it began using the mark CHROME BONES for purposes of marketing, sales and distribution,” but that is the extent of the information presented on this issue. Complainant’s evidence of secondary meaning consists only of its unsupported assertion that it has used the mark since 2000. There is no evidence explaining what that use consisted of, and no evidence bearing upon whether the use it made of the mark between 2000 and 2003 would be sufficient to confer common law rights trademark upon it, or to demonstrate that the mark became associated in some unique way with Complainant or its products. The WIPO Overview 3.0 states specifically that
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of the unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. Id., ¶ 1.3
Respondent’s default in this matter notwithstanding, the evidence before the Panel utterly fails to demonstrate that Complainant’s trademark rights accrued prior to April 2003, when Respondent registered the Domain Name.[i] Complainant’s arguments that Respondent is presently using the Domain Name in bad faith have substantial merit but that is immaterial because a complainant must prove both bad faith registration and bad faith use in order to prevail. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D 2000-0003, Mile, Inc v. Michael Burg, WIPO Case No. D2010-2011 (“The consensus view since the Policy was implemented in 1999 has been that the conjunctive "and" indicates that there must be bad faith both at the time of registration and subsequently.”).
For the reasons set forth above, the Panel finds that Complainant has failed to prove that Respondent registered the Domain Name in bad faith within the meaning of ¶ 4(a)(iii).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <chromebones.com> Domain Name REMAIN WITH Respondent. Notwithstanding the foregoing, because its findings as to the matter of bad faith registration of the Domain Name are based upon a lack of sufficient evidence presented in this proceeding, this Decision is issued without prejudice. Complainant may re-file a complaint involving the Domain Name in a new administrative proceeding, provided that any such complaint be fully supported by competent, relevant evidence.
Charles A. Kuechenmeister, Panelist
Dated: June 27, 2018
[i] The WIPO Overview 3.0 ¶ 3.0 expressly recognizes that even in cases of respondent default, panels have held that wholly unsupported allegations may not be sufficient to support a complainant’s case.
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