Caleb Marshall v. c/o Weebly Domains
Claim Number: FA1901001826454
Complainant is Caleb Marshall (“Complainant”), represented by Cameron Moody, California, USA. Respondent is c/o Weebly Domains (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thefitnessmarshall.com>, registered with Register.com, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 22, 2019; the Forum received payment on January 22, 2019.
On January 23, 2019, Register.com, Inc. confirmed by e-mail to the Forum that the <thefitnessmarshall.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 January 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2019 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 January 24, 2019, 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 February 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 uses its mark, THE FITNESS MARSHALL, to offer goods and services in the marketplace as it relates to fitness and personal health. Complainant has rights in the THE FITNESS MARSHALL mark through its United States Patent and Trademark Office (“USPTO”) application (Ser. No. 87635676, filed Oct. 5, 2017). Respondent’s <thefitnessmarshall.com> domain name is confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the <thefitnessmarshall.com> domain name. Respondent uses the domain name to offer competing fitness services. Further, Complainant contacted Respondent to request it change the domain name, and Respondent replied that it would not do so without monetary compensation.
Respondent registered and uses the <thefitnessmarshall.com> domain name in bad faith. Respondent disrupts Complainant’s business by creating confusion in the marketplace and disrupting Complainant’s business by offering competing services.
Respondent failed to submit a Response in this proceeding.
Complainant is Caleb Marshall (“Complainant”), of Los Angeles, CA, USA. Complainant has filed a domestic registration for the mark THE FITNESS MARSHALL, which its application, filed October 5, 2017 states in part that Complainant has used continuously the mark since at least as early as October 31, 2014, in connection with visual and audio performances featuring dance, fitness, and health instruction.
Respondent is c/o Weebly Domains (“Respondent”), of San Francisco CA, USA. Respondent’s registrar’s address is listed as unknown. The Panel notes that Respondent registered the <thefitnessmarshall.com> domain name on or about October 17, 2014.
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, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules 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.”).
Complainant claims rights in the THE FITNESS MARSHALL mark through its USPTO application (Ser. No. 87635676, filed Oct. 5, 2017). Policy ¶ 4(a)(i) does not require a complainant to own a registered trademark prior to a respondent’s domain name registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant does not expressly assert any common law rights in its mark, as its complaint is woefully inadequate overall. Complainant only provides a screenshot of its own website located at the <thefitnessmarshall.org> domain name. WHOIS information indicates the registration of that domain name took place in 2016, but the registrant information is protected, and does not reflect Complainant in this proceeding. Mere registration of a domain name without more does not establish common law rights. As noted above, common law rights require proof of secondary meaning. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Secondary meaning generally requires the claimant indicate specific data such as the length and amount of sales under the trademark, the nature and extent of advertising, and consumer association through surveys and media recognition. Complainant’s evidence here is lacking in all the necessary details. The Panel here finds that Complainant has failed to establish sufficient rights in the mark for the purposes of Policy ¶ 4(a)(i) .
The Complainant has NOT proven this element.
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel 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)).
The Panel declines to analyze this element.
The Panel declines to analyze this element.
Because Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <thefitnessmarshall.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: March 4, 2019
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