BidPal, Inc. v. Robert Bottorff / triptych
Claim Number: FA1808001804116
Complainant is BidPal, Inc. (“Complainant”), represented by April M. Jay and Paul Overhauser of Overhauser Law Offices, LLC, Indiana, USA. Respondent is Robert Bottorff / triptych (“Respondent”), represented by Gregory Meath of MEATH & PEREIRA, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <onecause.org>, 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.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 30, 2018; the Forum received payment on August 30, 2018.
On August 31, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the disputed domain name <onecause.org> 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 September 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 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 September 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 October 1, 2018.
On October 5, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq, as Panelist.
Having reviewed the communication 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.
a. Complainant registered the trademark ONECAUSE on March 27, 2018 to cover services of international class 36, before the United States Patent and Trademark Office (“USPTO”), with Registration No. 5,431,965.
b. Complainant has been using the trademark in commerce in the United States since October 23, 2017 according to its declaration of first use in commerce.
c. Respondent’s disputed domain name <onecause.org> is confusingly similar to Complainant’s mark because Respondent includes the entire mark in the disputed domain name plus the “.org” generic top-level domain (“gTLD”).
d. Respondent attempts to co-opt Complainant’s ability to present itself on the Internet.
e. Respondent lacks rights and legitimate interests in the disputed domain name <onecause.org> because Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent attempts to commercially gain by creating a likelihood of confusion with Complainant’s mark and diverting internet users to Respondent’s webpage.
f. Respondent registered and uses the disputed domain name <onecause.org> in bad faith to profit from Complainant’s reputation.
g. Respondent attempts to commercially gain from Complainant’s substantial reputation and goodwill. Furthermore, there is no good faith use on which Respondent can rest the ownership of this website.
h. Respondent registration dilutes the distinctiveness of Complainant’s trademark.
a. Respondent does not contest the existence of Complainant’s trademark registration or the similarity between the trademark and the disputed domain name.
b. Nonetheless, Complainant created the aforementioned similarity as Complainant knew of Respondent’s domain name registration before Complainant’s first use of its trademark in commerce.
c. Complainant fails to offer evidence that the ONECAUSE trademark has acquired secondary meaning.
d. Respondent has rights and legitimate interests in the disputed domain name <onecause.org> because Respondent is using the domain name for a legitimate noncommercial use.
e. Respondent uses the disputed domain name to host a non-commercial blog, as his email server, and as a space for online storage of personal documents.
f. Complainant has failed to provide evidence regarding Respondent’s commercial use or any intent to divert internet users.
g. Complainant fails to present sufficient evidence that Respondent registered and uses the disputed domain name <onecause.org> in bad faith.
h. Respondent’s registration of the disputed domain name predates Complainant’s use of the trademark ONECAUSE by seventeen years.
i. Respondent could not have had actual knowledge of Complainant’s mark at the time of registration because the mark did not exist at the relevant time.
j. Complainant is engaging in the practice of reverse domain name hijacking in an attempt to deprive Respondent of its domain name.
1. Complainant registered the trademark ONECAUSE on March 27, 2018 to identify services of international class 36, before the United States Patent and Trademark Office (“USPTO”), with Registration No. 5,431,965.
2. In order to determine whether or not the disputed domain name is confusingly similar to a trademark such registration does not require predating the registration of the disputed domain name.
3. Complainant fails to prove Respondent’s lack of rights or legitimate interest in the disputed domain name or a prima facie case to shift the burden of proof.
4. Complainant failed to prove its assertions regarding Respondent’s 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.
Complainant contends to be the owner of the trademark ONECAUSE in the United States of America.
a) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of jurisdictions throughout the world.
The worldwide-accepted definition of a trademark involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it in connection with goods and services of the type with respect to which the trademark is registered.
However, the UDRP does not discriminate between registered and unregistered trademarks[i] and thus, it is well established that a Complainant does not need to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark in order to deserve legal protection, based solely on its use in commerce.
Complainant proved its rights in the trademark ONECAUSE to identify services of international class 36, registered before the United States Patent and Trademark Office (“USPTO”), with Registration No. 5,431,965. Annex 3 to the Complaint.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with the stated services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive[ii]. Thus, Complainant established its rights in the trademark[iii] since 2018.
The Panel adds that, although Respondent’s disputed domain name <onecause.org> predates Complainant’s trademark registration, Paragraph 4(a)(i) to the Policy does not require the trademark to be registered prior to the disputed domain name[iv].
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark ONECAUSE for purposes of Paragraph 4(a)(i) of the Policy.
b) Identical or confusing similarity between the Disputed Domain Name and Complainant’s trademark
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s trademark ONECAUSE since the disputed domain name <onecause.org> contains Complainant’s trademark.
In the first place, before establishing whether or not the disputed domain name is confusingly similar to Complainant’s trademark ONECAUSE, the Panel wants to point out that the addition of generic top-level domains (“gTLDs”), i.e., “.com,” “.biz,” “.edu,” and “.org,” cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[v]. Neither the addition of country code top-level domains (“ccTLDs”), i.e., “.co.,” “.de,” “.cr,” “.es,” nor the insertion of a gTLD have a distinctive function[vi].
UDRP Panels have unanimously accepted that the inclusion of the “.com” gTLD in a disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:
“[T]he addition of the generic top-level domain (“gTLD”) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services”.
However, the Panel considers that the reproduction of Complainant’s trademark ONECAUSE by the disputed domain name <onecause.org> is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[vii], which has also been accepted by Respondent.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus the requirement set forth in Paragraph 4(a)(i) of the Policy has been duly satisfied.
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a disputed domain name:
(i) Before any notice of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although, Complainant argues that Respondent does not have any rights or legitimate interests regarding the disputed domain name Complainant failed to make a prima facie case to revert the burden of proof and did not file any evidence to prove his assertions.
In contrast, Respondent established its rights and legitimate interest in the disputed domain name, as per Paragraph 4(c)(i) and Paragraph 4(c)(iii) of the Policy, as follows:
(i) Regarding Paragraph 4(c)(i) of the Policy: before any notice of the dispute, Respondent used the disputed domain name.
Respondent acquired the disputed domain name before Complainant registered its trademark and has used it since 1999 to discuss his struggle with Celiac disease, to discuss his interest in specialty coffee, for personal online storage of documents, such as musical performances by his wife and as the location for his e-mail service. Thus, Respondent has used the disputed domain name before any notice of the dispute.
(ii) Concerning Paragraph 4(c)(iii) of the Policy: Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In fact, Respondent is exercising his constitutional right freedom of speech, using the disputed domain name for non commercial purposes, only to have an email address (email service), discuss his interests and store information.
The Panel reviewed the content of the website to which the disputed domain name resolves to and found that Respondent is using it as a blog, which is not related to the trademark ONECAUSE, registered to identify services of international class 36; therefore, Respondent is exercising his right to free speech and further justifies the registration and use of the disputed domain name at issue.
Since both parties in this case are domiciled in the United States and are Citizens, the Panel must consider the First Amendment of the United States Constitution that states the following:
“Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the government for a redress of grievances”.
In that sense, like in The American National Red Cross v. Mafiabusters.com LLC a/k/a Thomas Quinn[viii], Respondent’s activities performed through the disputed domain name are evidence that he is exercising his freedom of speech. This right can be exercised through the website to which the disputed domain name resolves to or any other. Hence, the use of the disputed domain name <onecause.org> as a blog is lawful. Banning Respondent from using such domain name would constitute an illegitimate limitation of his right to free speech.
In McLane Company v. Fred Craig[ix], the Panel found that the right to make such use of third party’s trademarks is based on the First Amendment of the United States Constitution and is considered a legitimate use. Specifically, the Panel stated that:
“Paragraph 4(c) of the Policy sets out circumstances that demonstrate the Registrant’s rights or legitimate interests in the name. One such circumstance is the legitimate non-commercial or fair use of the domain name without intent for commercial gain to mislead diverts consumers. Respondent is using the domain name “mclanenortheast.com” as a means of protesting against Complainant. Respondent has a grievance against Complainant and has chosen to publicize this grievance via a web site. Protest and commentary is the quintessential non-commercial fair use envisioned by the Policy. Protest and commentary are also considered typical fair use under U.S. law relating to domain names. When commenting on the “Anticybersquatting Consumer Protection Act”, the House Judiciary Committee specifically referred to comment and criticism as lawful non-commercial fair use of a mark. Thus Respondent has raised a plausible claim that he has a legitimate interest in the domain name “mclanenortheast.com” and Complainant has not met its burden of proving an absence of such a legitimate interest. Complainant’s bare allegation of tarnishment does not overcome Respondent’s claim of a legitimate interest”.
Similarly, in this case Respondent is using the disputed domain name to express his point of view. Consequently, the Panel finds that Respondent has shown that he is using the disputed domain name in connection with a legitimate non-commercial and fair use, consistent of a blog, a storage tool and an email provider.
Thus, in view of the above arguments taken together, Respondent has established rights or legitimate interests in the disputed domain name, which Complainant failed to rebut. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy has not been satisfied.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a disputed domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, who is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) 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
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith to profit from Complainant’s reputation.
However, none of those claims were supported by evidence of any kind in the Complaint.
On the contrary, proofs show that the disputed domain name was registered by Respondent in 1999, long before Complainant’s trademark and domain name registration. Moreover, that Complainant knew of the existence of the disputed domain name before its first use and trademark registration.
Furthermore, there is no evidence that the disputed domain name was registered or is being used in bad faith. The mere lack of response to a cease and desist letter per se does not show bad faith.
Moreover, Complainant did not provide evidence that (i) the domain name was acquired by Respondent to prevent Complainant from reflecting its trademark in the disputed domain name, since the domain name registration was prior to the trademark registration; or (ii) Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business; or (iii) Respondent acquired the disputed domain name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant's trademark, since the disputed domain name registration was prior to the trademark registration and there is no evidence of a commercial interest in the disputed domain name[x].
Therefore, the Panel concludes that Complainant has failed to prove Respondent’s bad faith.
Consequently, all three elements of the Policy paragraph 4(a) have not been established in the present case.
Reverse Domain Name Hijacking
Finally, as per Paragraph 15(e) of the Rules, the Panel is entitled as follows:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
As per Paragraph 1 of the Rules: “Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Regarding Reverse Domain Name Hijacking, there must be sufficient evidence for the Panel to conclude that Complainant has filed the Complaint in bad faith.
Reverse Domain Name Hijacking would succeed when Respondent’s use of the disputed domain name has not constituted bad faith and weaknesses in the Complaint are revealed during the proceeding[xi], such as, Complainant’s knowledge of: (i) its lack of relevant trademark rights, (ii) Respondent's rights or legitimate interests in the disputed domain name, or (iii) Respondent's lack of bad faith in the disputed domain name.
In the present case, the disputed domain name was registered in 1999, for Respondent to express to storage his documents, use the email service and maintain a blog, which was described to be his “one cause”.
Complainant registered its trademark in 2018 before the USPTO, and before the first use of the trademark, Complainant offered Respondent to buy the disputed domain name, thus, demonstrating knowledge of the previous existence of the disputed domain name.
Furthermore, Complainant failed to file any evidence concerning lack of rights or legitimate interest and bad faith.
Moreover, Complainant tried to confuse the Panel regarding Respondent’s bad faith, as the Complaint asserted that Respondent is profiting from Complainant’s reputation, which is not evidenced and probably nonexistent as the trademark ONECAUSE was recently registered.
The Panel accordingly finds that Complainant’s actions constitute an abuse of the UDRP process.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Moreover, the Panel declares that the Complaint was brought in bad faith and thus constitutes Reverse Domain Name Hijacking.
Accordingly, it is Ordered that the disputed domain name <onecause.org> REMAIN WITH Respondent.
Fernando Triana, Esq., Panelist
Dated: October 11, 2018
[i] See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000).
[ii] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[iii] See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Royal Bank of Scot. Grp. plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”.); see also Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world”).
[iv] See Konstantin Graf Lambsdorff v. Eighty Bus. Names, D2012-2039 (WIPO Dec. 21, 2012) (“Paragraph 4.a.(i) does not require that the common law rights pre-date, or the trademark be registered prior to, the domain name; though it may be relevant to the assessment of bad faith pursuant to Paragraph 4.a.(iii), which is considered below.”).
[v] See Altec Indus., Inc. v. I 80 Equip., FA 1437753 (Forum May 18, 2012).
[vi] See YottaMark, Inc. v. Lukasz Chudy, FA 1392357 (Forum July 15, 2011)
[vii] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[viii] See The American National Red Cross v. Mafiabusters.com LLC a/k/a Thomas Quinn Claim Number: FA0206000114589 (Forum Aug. 6, 2002).
[ix] See McLane Company v. Fred Craig. D2000-1455 (WIPO Jan. 11, 2001).
[x] See Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc. D2000-0174 (WIPO May 26, 2000) (“The fact that Respondent registered its domain name two (2) years before the intent to use application of Complainant was filed and three (3) years before Complainant started using the mark is persuasive to the Panel that none of the bad faith factors in Policy 4(b) apply”).
[xi] See Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, Case No. D2005-0309 (WIPO July 19, 2005) (Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151)). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations.) See also Prime Pictures LLC v. DigiMedia.com L.P. Case No. D2010-1877 (WIPO Feb. 2, 2011).
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