Lights Out Holdings, LLC v. Bruce Gordon
Claim Number: FA1807001795430
Complainant is Lights Out Holdings, LLC (“Complainant”), represented by Ben Wagner of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., California, USA. Respondent is Bruce Gordon (“Respondent”), represented by Marc E. Hankin of Hankin Patent Law, APC, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lightsout.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 known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 5, 2018; the Forum received payment on July 11, 2018.
On July 6, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lightsout.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 July 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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 firstname.lastname@example.org. Also on July 11, 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 July 31, 2018.
On August 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
On August 5, 2018, Complainant made Additional Submissions which were compliant with Supplemental Rule 7.
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 from Respondent to Complainant.
Complainant asserts trademark rights in LIGHTS OUT. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is identical or confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the domain name; and the domain name has not been used either at all or for a bona fide purpose. .
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant. Further, that it has passively held the domain name in bad faith and, to the small extent that it has been used, that use has been to promote goods competitive with those said to be offered by Complainant under the trademark.
Respondent asserts that it is the senior user of the LIGHTS OUT trademark and so has rights to and a legitimate interest in the domain name. It follows that it could not have registered the domain name in bad faith.
Respondent requests that the Panel make a finding of reverse domain-name hijacking.
C. Additional Submissions: Complainant
Complainant made Additional Submissions in compliance with the Forum’s Supplemental Rule 7. Complainant observes that although registration of the domain name predated the date of registration of its U.S. Federal trademark, Respondent only became the domain name registrant by transfer in 2008 after Complainant had registered the trademark and had developed the trademark as a valuable brand.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the LIGHTS OUT mark in connection with the sale of sports equipment;
2. Complainant’s business was established by the National Football League (“NFL”) player, Shawne Merriman, nicknamed “Lights Out”;
3. Complainant owns a number of United States Patent and Trademark Office (“USPTO”) registrations for LIGHTS OUT, including Reg. No. 3,990,916, registered July 5, 2011[i];
4. the disputed domain name was registered on March 7, 2000[ii];
5. the domain name resolves to the landing page of a rudimentary site which is and has been in the same state, under construction, promising boxing and kickboxing equipment under the name LIGHTS OUT; and
6. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
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.[iii] Since Complainant evidences its registration of the trademark LIGHTS OUT with the USPTO the Panel finds that it has shown trademark rights. The disputed domain name takes the trademark and merely adds the non-distinctive gTLD, “.com”. The Panel finds that the disputed domain name is identical to the trademark for the purposes of the Policy.[iv]
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Nonetheless, for the purposes of later discussion the Panel finds it convenient to examine here two other trademark related matters. First is Respondent’s submission that the registration date of the disputed domain name predates Complainant’s rights in the trademark. That claim has potential relevance to paragraphs 4(a)(ii) and (iii) of the Policy but is not determinative of whether or not Complainant has trademark rights for the purposes of paragraph 4(a)(i).[v] It is considered later.
The second is Complainant’s submission is that it has common law rights in the trademark in addition to its registered rights. Common law rights may be established through use and public recognition of the trademark such that it has come to acquire secondary meaning. Complainant’s business was found by Shawne Merriman, a NFL footballer who enjoyed a professional career from 2005 to 2013. During that career Merriam had been known by the nickname, “Lights Out”.
Complainant asserts first use of that expression in commerce as a trademark in 2004. That claim is not based on evidence of actual use but on USPTO Reg. No. 2,885,212 for LIGHTS OUT. That registration was filed on February 10, 2003 on an “Intent-to-Use Basis” and actual use was allegedly first made of the trademark on June 11, 2004. That registration was originally filed and registered by LoomWorks Apparel, Inc., a company having no apparent relationship with Complainant. Respondent provides evidence from the USPTO showing that registration was assigned in 2007 to Merriman and in 2008 to Complainant.
Accompanying the Complaint and in support of the common law trademark claim are copies of news and media articles referring to Merriman’s football career both at college and then after 2005 in the NFL. The evidence of use of Merriman’s nickname as a trademark is more limited. There is a 2015 article referring to the launch of Complainant’s clothing and sportswear website and there is an interview with Merriman where, tellingly, he states that in 2006 he “bought the [name] rights from a company in Irvine, California” (LoomWorks Apparel, Inc., presumably, since it has an Irvine address). Merriman states that he “started by doing mom & pop stores in San Diego, with just t-shirts and hats. … It wasn’t until I retired [in 2013 the Panel notes ] that I really got behind the brand.”
Based on this evidence the Panel finds that any common law or unregistered trademark rights which Complainant claims would not have come accrued until well after the registration date of the disputed domain name in 2000.
For the reasons which follow no finding is required as to rights or legitimate interests, either for the purpose of paragraph 4(a) of the Policy or for the determination of the reverse domain name hijacking claim.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and 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.
The Panel finds no evidence which would support a finding of registration and use in bad faith based on any of those four scenarios. Rather, the key question in this case is whether the domain name was registered in bad faith. If there was no bad faith registration, argument as to bad faith use becomes irrelevant.
The publicly available WhoIs information for the domain name lists a creation date of March 7, 2000. As stated above, the Registrar confirmed that Respondent is the current registrant of the name. Nevertheless, Respondent claims to have first registered the domain name in 1997. In support of that claim is Respondent’s sworn Declaration, but no other evidence. What Respondent asserts is that:
“… on March 7, 2000 the registration information for the Domain was updated, to be owned by Respondent’s company Executive Boxing, Inc., and identified himself, Bruce Gordon, as the Administrative and Technical Contact. … [Respondent states that it] transferred the domain from Executive Boxing, Inc. to himself as an individual, Bruce Gordon, in or around 2007 to 2008.”
The Panel need not further consider the claim that the domain name was first registered in 1997 since the March 7, 2000 date given in public records is sufficiently early for the following analysis to apply in either case. Further, in the absence of better records, the Panel accepts that the domain name was transferred from Executive Boxing, Inc. to Respondent in 2008; there is a sworn statement to that effect and the Panel notes that Complainant accepts that claim for the purposes of its own arguments.
The March 7, 2000 registration date of the domain name is well before Complainant could sustain any claim to trademark rights, registered or unregistered. Based on that date there is no foundation for a finding that the domain name was registered in bad faith. Nonetheless, it is Complainant’s additional argument that “all issues are measured from no earlier than Respondent’s acquisition registration in 2008.” Complainant adds that:
“… to argue about whether a prior registrant made a good faith adoption or legitimate use of a domain is a red herring. … Where an original registration might predate the Complainant’s trademark rights, but the domain is transferred after the Complainant has established trademark rights, the transfer date is used to test the requirements of the Policy and the original registration offers no shield.”
Arbitrations under the Policy are offered not just by the Forum by the other providers, including the Arbitration and Mediation Center of the World Intellectual Property Office (“WIPO”). In common with the Forum, WIPO panels seek to ensure that the Policy operates in a fair and predictable manner and so, in its present third iteration, WIPO publishes its so-called WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Jurisprudential Overview 3.0”) which summarizes consensus panel views on a range of important substantive and procedural issues. Paragraph 3.8.1 of the WIPO Jurisprudential Overview 3.0 states:
“… 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”,
but qualifies that basic principle, as follows:
“Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.”
Further, paragraph 3.8.2 of the WIPO Jurisprudential Overview 3.0 states:
“As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”
Furthermore, paragraph 3.9 of the WIPO Jurisprudential Overview 3.0 states in part:
“Where the respondent provides satisfactory evidence of an unbroken chain of possession, panels typically would not treat merely “formal” changes or updates to registrant contact information as a new registration.
… panels have found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith.
On the other hand, the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith.
Facts or circumstances supporting an inference that a change in registrant has occurred may typically include a change in the content of the website to which a domain name directs to take advantage of the complainant’s mark or unsolicited attempts to sell the domain name to the complainant only following such asserted change in registrant.”
Complainant’s submission is that:
“Registrant took the domain with an old website attached to it, left it exactly as-is with no changes, updates or uses of the domain for an actual business from the time of his registration up to the present. He is and always has been a blatant squatter, whose intent has become more obvious with each passing year of squatting. While the website is a more elaborate place-holder than usual (because of the circumstances), the website content has become exceedingly stale.”
The Panel has taken all of the evidence in account, including the facts that (i) both parties lived in Southern California at relevant times, (ii) Complainant was a NFL player commonly known by the nickname “Lights Out” by 2008 when Respondent took transfer of the disputed domain name, and (iii) the resolving website has been largely inactive over some years. The Panel must balance those facts against certain countervailing information provided by Respondent, the most influential of which is now summarized.
Respondent provides evidence of the existence of a Californian company, Executive Boxing, Inc., registered on August 26, 1992 (now suspended by the Franchise Tax Board). Respondent submits that it was the sole owner of that company and provides a copy of public records which show Respondent as the named Agent for Service of Process for that company. Further, Respondent provides evidence of lapsed USPTO Reg. No. 2,353,670, for LIGHTS OUT, registered on May 30, 2000, expired March 3, 2007 in the name of Executive Boxing Inc. with a claimed first use date of July 19, 1997. In addition, Respondent provides evidence from web.archive.org’s Wayback Machine of the earliest screen-capture available of the resolving website, dated February 7, 2001. It shows a site said to be under construction, promoting boxing and kickboxing gear and using a stylized version of the trademark LIGHTS OUT. That site has remains essentially unchanged throughout the relevant period.
What is clear to the Panel is that Complainant’s submission that Respondent is a “blatant squatter” goes too far. The position most favourable to Complainant would be for the Panel to take stock of all of the evidence in 2008 when Respondent is said to have himself acquired the domain name. By Complainant’s submission, that time was the zenith of Merriman’s professional career. However, whatever common law rights Complainant might have in the trademark, they did not, on the evidence, come into being until some years after 2008. Whilst it might be said that by 2008 Merriman had some form of personality right - a right which has been recognized under the Policy for the purposes of paragraph 4(a)(i) - in the context of this discussion concerning bad faith conduct, that right only has weight to the extent that it must be measured against Respondent’s conduct on the whole and its likely intentions or motivations.
Further, whilst by 2008 Complainant may have taken by assignment certain registered trademark rights, there is no evidence as to how or even if the predecessor-in-title of the trademark registration used the trademark. Although that assignment of rights might for some purposes, for example before the USPTO, prioritize certain competitive claims to registration or offer other benefits under trademark law and practice, in the absence of proof of earlier use and for the purposes of paragraph 4(a)(iii), there is no landscape against which Respondent’s conduct might be viewed. In short, the fact that by 2008 Complainant may have come to own a Federal trademark registration is unhelpful to this bad faith analysis.
Furthermore, the Panel is not convinced that 2008 is the critical time when Respondent’s conduct should be considered. The WIPO Jurisprudential Overview 3.0 speaks of the transfer date of a domain name registration from a third party [emphasis added] to a respondent as being the date a panel will assess bad faith. Here, the transfer was from Executive Boxing, Inc., a company once, perhaps still, owned by Respondent. Whilst Complainant questions the connection between Respondent and that company, any other construction of the evidence would require the Panel to find that Respondent had formulated an elaborate fraud on Merriman by 2000 at a time when Merriman’s sporting career was only beginning.
In terms of the guidance given by the WIPO Jurisprudential Overview 3.0, there is grave uncertainty as to whether Respondent could be said to have acquired the disputed domain name after Complainant had accrued trademark rights. In the Panel’s assessment there is no cogent evidence which points towards Respondent having registered or taken the domain name with the intention to unfairly capitalize on Complainant name or reputation. The fact that the website has not altered over time is, on this occasion, evidence that favours Respondent. There is no evidence that Respondent make any unsolicited attempt to sell the domain name to Complainant or to a competitor of Complainant. Finally, the Panel considers it noteworthy that the expression “lights out” is commonly used in connection with the sport of boxing and finds that it is entirely plausible that the words were adopted in good faith with that connection in mind.
Complainant must satisfy all elements of the Policy to a particular standard – the balance of probabilities. Thus, Complainant must show, inter alia, that it was more likely than not that Respondent registered the domain name in bad faith. The Panel finds that it has failed to do so. Complainant has not met the evidentiary onus to prove that Respondent targeted Complainant or its trademark. Whilst that finding stands on its own, the Panel notes that the Complaint was made a decade after Respondent became the holder of the domain name and 18 years after its registration. Although Respondent did not raise an argument of laches, a “defense” which has received mixed reception under the Policy, panelists have remarked on many occasions that the passage of time will likely have an impact on how evidence might be assessed.
The Panel finds no evidence of registration in bad faith and that conclusion is determinative of the matter. The Complainant has not established the third element of the Policy.
Reverse Domain Name Hijacking (“RDNH”)
Respondent submitted that the Panel should make a finding of RDNH by the Complainant. Paragraph 1 of the Rules defines RDNH to mean “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Paragraph 15(e) of the Rules provides that if “the Panel finds that the complaint was brought in bad faith, for example in an attempt at [RDNH], the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The WIPO Jurisprudential Overview 3.0 asks at paragraph 4.16: “In what circumstances will panels issue a finding of Reverse Domain Name Hijacking (RDNH)?” in reply to which UPRP panelists are in agreement that:
“… the mere lack of success of a complaint is not itself sufficient for a finding of RDNH” … [which] “ultimately turns on the complainant’s conduct.”
Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith … such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) … , (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, [and] (viii) basing a complaint on only the barest of allegations without any supporting evidence.
Here, Complainant established trademark rights for the purposes of the first element of the Policy. Complainant nonetheless failed in its claim for the reasons already given. However, as noted, RDNH is not necessarily found simply because a complaint failed or is weak or misconceived. There must, as indicated, be an element of bad faith. [vi] The Panel does not find bad faith. Whilst the Complaint failed because there was no evidence of registration in bad faith in the circumstances of the case, the Panel finds that Complainant might have had a legitimate, albeit misconceived, belief that it had superior trademark rights and that its claim was sustainable.
The Panel does not find RDNH.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <lightsout.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: August 23, 2018
[i] Not the earliest of those registrations but the earliest one clearly standing in the name of Complainant as presented in the Complaint. Other registrations are discussed later.
[ii] According to WhoIs records, albeit that a contrary claim (discussed later) is made by Respondent.
[iii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (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).”)
[iv] See, for example, ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”); see also Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Forum Nov. 16, 2009) holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”
[v] See, for example, AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but that fact may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
[vi] See, for example, 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”.
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