Dr. Muscle v. Michael Krell
Claim Number: FA1903001833036
Complainant is Dr. Muscle (Dr. Muscle is represented by its President, Carl-Etienne Juneau, Montreal, Canada). Respondent is Michael Krell (Michael Krell, Nebraska, USA).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drmuscle.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.
David H. Bernstein as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 7, 2019; the Forum received payment on March 7, 2019.
On March 8, 2019, Network Solutions, LLC confirmed by e-mail to the Forum that the <drmuscle.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 March 11, 2019, the Forum notified Complainant of a deficiency and required that Complainant rectify the issue within five calendar days. Complainant complied and submitted an amended Complaint to the Forum on March 11, 2019.
On March 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 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 firstname.lastname@example.org. Also on March 12, 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.
A timely Response was received and determined to be complete on March 28, 2019.
On March 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David H. Bernstein as Panelist.
Complainant filed an Additional Submission to the Forum on April 2, 2019.
Respondent filed an Additional Submission on April 5, 2019.
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 is a Canada-based company that created and sells a personal training mobile application named Dr. Muscle. The mobile app, which guides users during workouts and analyzes training data, has been publicly sold since 2016 on the Apple and Google Play platforms as well as on the operating commercial website, drmuscleapp.com. Complainant registered the domain drmuscleapp.com on September 9, 2016.
With respect to the three UDRP elements, Complainant first asserts: “On Dec. 1, 2018, we registered our trademark with the United States Patent and Trademark Office (serial number 88213349).” Complainant goes on to argue that the domain name <drmuscle.com> is identical to its mark.
Turning to the second element, Complainant alleges that Respondent has no rights or legitimate interests in the disputed name because Respondent is not commonly known by that name, Complainant has not permitted Respondent to use the mark in any way, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, and Respondent has never made an active use of the disputed domain name.
With respect to the third element, Complainant argues that Respondent registered and used the domain name in bad faith “with the sole intention to sell it.” Complainant notes that Respondent registered the domain name in December 2018 and initially offered the domain name for sale for $4,995, but then raised the price to $9,995 in March 2019. Complainant asserts that the increased asking price is itself evidence of bad faith because the price is arbitrary and is in excess of out-of-pocket costs.
Respondent does not dispute Complainant’s trademark rights or its claim that the domain name <drmuscle.com> is identical to Complainant’s mark.
Regarding whether he should be considered as having rights or legitimate interests in the disputed domain name, the totality of Respondent’s response is as follows: “The Respondent is a full-time domain name investor and the selling of domain names is a bona fide business.”
Turning to the final element, Respondent contends that he did not register the domain name in bad faith because, “at the time of the domain name registration, and up to the time of this UDRP proceeding[,] Respondent was unaware of the Complainant’s business.” Respondent offers time-stamped screenshots of Google search results between December 15 and December 29, 2018 and evidence of Complainant’s minimal exposure in the United States as evidence of its lack of knowledge. Respondent also declares that “dr” and “muscle” are common English terms that produce varied results in a Google search.
As further evidence of his lack of bad faith, Respondent explains that his domain name pricing is based on years of experience in the industry and that the price for this domain name is consistent with the price of similar domain names in his portfolio and sold by third parties. For example, he notes, DrFinance.com was sold for $10,000. He further argues that he has never contacted the Complainant or any other individual in order to sell the domain name, and states that the landing page of <drmuscle.com> has never contained information that infringes upon or causes confusion with Complainant’s mark, as the landing page simply shows that the domain name is for sale.
C. Additional Submissions
In its Additional Submission, Complainant challenges the points made by Respondent. Regarding Respondent’s claim to rights and legitimate interests, Complainant argues that the selling of domain names is not a bona fide offering of goods and services, particularly because Respondent has never made active use of the domain.
The remainder of Complainant’s Additional Submission focuses on the bad faith element, claiming that Respondent submitted misleading evidence to the Panel and did not uphold its duty under Paragraph 2 of the Policy to forebear from infringing on the rights of a third party. In particular, Complainant addresses the time-stamped screenshots of Google search results between December 15 and December 29, 2018 that Respondent submitted as proof that he was unware of Complainant’s business. According to Complainant, restricting dates in a Google search only shows pages published between said dates, not the actual results one would have seen if one conducted a search on those dates. Complainant submitted December 2018 results from a service that monitors and records Google search results over time. Based on this data, the first four search results for “dr muscle” in the United States in December 2018 directly pertained to Complainant’s business, i.e. Complainant’s website, store page on the Google Play store, store page on the Apple App Store, and Facebook page. Complainant asserts that Respondent’s allegedly misleading evidence contradicts the reality that Complainant’s company could have easily been found on Google in December 2018.
Complainant also reiterates its accusation that Respondent is guilty of cybersquatting and asserts that Respondent’s non-use of the domain name is further evidence of bad faith.
In its Additional Submission, Respondent responds to Complainant’s additional contentions. In order to prove its legitimate interest in the domain name, Respondent reiterates that registering domain names for the purpose of selling them is a bona fide offering of goods and services. Respondent also apologizes to the Panel for any misinformation submitted regarding its time-stamped Google search because, Respondent states, he was not aware of how the “time” filter works in Google searches. Finally, Respondent repeats his arguments that “dr” and “muscle” are common English terms; that Respondent is not a competitor of Complainant; and that he has never contacted Complainant in an effort to sell the domain name.
As an initial matter, the Panel must consider whether to accept the parties’ Additional Submissions. Notwithstanding Supplemental Rule 7, the Panel retains the discretion to decide whether to accept additional submissions. See generally Bar Products.com, Inc. v. RegisterFly.com, FA 829161 (Forum Jan. 9, 2007) (declining to consider Complainant's reply because it adds nothing of substance to the record, and does not address any arguments of Respondent that could not have been anticipated by the Complainant). If an additional submission simply reargues the same points, there is no reason to accept it; on the other hand, if the additional submission addresses arguments in the Response that Complainant could not have anticipated, the Panel may allow the additional submission.
Most of the content of Complainant’s Additional Submission is merely repetitive of Complainant’s Complaint or alleges facts and arguments that were obviously relevant to this dispute and should have been asserted in the Complaint. To the extent the additional submission addresses facts or arguments that should have been anticipated in the Complaint, the Panel disregards it. The only part of the Additional Submission that rebuts an unexpected argument concerns Complainant’s discussion of Respondent’s alleged misleading evidence concerning the time-stamped Google search. As such, the Panel considers this claim and its supporting evidence.
The same deficiency affects most of Respondent’s Additional Submission. The one aspect of the Respondent’s additional submission that the Panel will accept is the Respondent’s response to Complainant’s assertion of misleading evidence with respect to the time-filtered Google searches submitted by the Respondent.
Having carefully reviewed the evidence and the parties’ arguments, the Panel finds the following:
The disputed domain name is identical or confusingly similar to a trademark in which Complainant holds rights.
On the limited record submitted in this proceeding, Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in respect of the domain name, and Respondent has failed to come forward with sufficient evidence to rebut that finding.
On the limited record submitted in this proceeding, Complainant has failed to prove by a preponderance of the evidence that the domain name has been registered and 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.
To prove the first element, the Complainant must have trade or service mark rights, and the domain name must be identical or confusingly similar to Complainant’s mark.
Complainant erroneously represented to the Panel that it registered its mark with the United States Patent and Trademark Office on December 1, 2018. Upon review of the supporting annexes, the Panel finds Complainant does not have a registration; rather, Carl-Etienne Juneau, the President of Complainant, applied to register that mark on December 1, 2018. Although the mark has been approved and is scheduled to be published on May 14, 2019, it is not yet registered and may yet be opposed by third parties. Therefore, the application does not give rise to any presumption that the mark is valid.
Nevertheless, based on the allegations in the Complaint that the Complainant has used the Dr. Muscle mark in commerce for a personal training mobile app, the Panel finds that Complainant has alleged trademark rights. The Panel notes that Respondent does not challenge or refute the existence of those rights. As the domain name is obviously identical to the DR. MUSCLE trademark, Complainant has met its burden of proof as to the first element.
Regarding the second element, given the practical difficulty of definitively proving a negative, Complainant need only allege that Respondent lacks rights or legitimate interests in a domain name in order to make a prima facie case under Policy ¶ 4(a)(ii). The burden of production then shifts to Respondent to present evidence showing that it does have rights or legitimate interests (though the burden of proof always remains with Complainant). See Advanced International Marketing Corp. v. AA-1 Corp., Case No. FA 780200 (Forum Nov. 2, 2011); see also Neal & Massey Holdings Ltd. v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (complainant must offer some evidence to make its prima facie case that Respondent lacks rights and legitimate interests and then the burden shifts to Respondent to come forward with evidence of its rights or legitimate interests.”)
Here, the Complainant asserts, in conclusory fashion, that Respondent is not commonly known by the domain name, is not permitted to use the mark in any way, does not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial use, and has never made an active use of <drmuscle.com>. Although these assertions are thin, they are sufficient to make a prima facie showing that Respondent lacks rights or legitimate interests. As the Complainant has satisfied its burden, Respondent must now come forward with some evidence to demonstrate its legitimate interests in the domain name.
According to Policy ¶ 4(c), Respondent may demonstrate its rights to or legitimate interests in the Domain Name by showing any of the following circumstances (which examples are illustrative and not exclusive):
(i) before any notice to it of the dispute, its 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) it (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) it is making a legitimate noncommercial 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.
Respondent has not come forward with sufficient evidence to demonstrate its rights or legitimate interests in the domain name. The only response proffered by Respondent is the statement that he is a full-time domain name investor. Although the selling of domain names comprised of merely descriptive terms may be considered a bona fide business, Respondent has not proffered any factual evidence that can establish that the domain name here, <drmuscle.com>, is derived from a dictionary term or that the combination of “Dr” and “Muscle” would not be perceived as a brand. Nor has Respondent submitted any factual evidence that establishes that “Dr. Muscle” is the kind of descriptive term that should be deemed fair game for domain name speculation.
Although it is a close call, the Panel concludes, given the Respondent’s failure to come forward with factual evidence supporting its allegations that Complainant has succeeded in demonstrating that Respondent lacks rights or legitimate interests in the disputed domain name.
Finally, Complainant must show that the domain name has been registered and is being used in bad faith. Although it is also close call, the Panel concludes that Complainant has failed to carry its burden based on the allegations of the Complaint.
The Complainant’s only argument in support of its assertion of bad faith is that Respondent sold the domain name for an amount higher than the registration costs, that he raised the price, and that he sells other domain names. Those facts describe a domain name speculator. Domain name speculation alone is not bad faith. Rather, to constitute bad faith, the speculation must be targeted at the trademark value of a name – in other words, Complainant must show that the Respondent is trying to profit from the value of the trademark in the sale of the domain name rather than from the descriptive value of the domain name.
Respondent has come forward with evidence that it sells other, similar domain names in the same price range, and that a third party has also sold a similar domain name in the same price range. This evidence establishes that the price sought here is not unreasonably inflated because of the value of Complainant’s trademark. Complainant has not rebutted this evidence with any argument that the other, similar domain names being sold by Respondent, and the similar domain name sold by a third party, have been sold by third parties are unfairly priced based on the value of any corresponding trademarks.
Further, although Respondent has not established that it has rights in the <drmuscle.com> domain name, the Panel finds that the components of the domain name, “Dr.” and “Muscle”, are common terms. The Panel finds Respondent’s claim credible that he registered the domain name because of the descriptive nature of those terms rather than because Respondent was targeting Complainant and its trademark. Respondent, based in Nebraska, credibly asserts that he never heard of Complainant (based in Montreal) or its trademark, and that Complainant’s app is not well known. Complainant has failed to rebut these assertions with sufficient evidence of the fame or renown of its app in Nebraska or in the United States generally, nor has Complainant adduced any evidence that would support a finding that Respondent likely was aware of Complainant or its app or its DR. MUSCLE trademark at the time he registered the domain name.
One fact that does give the Panel some pause is that Respondent, as a domain name speculator, does have some obligation under Paragraph 2 of the Policy to ensure that his domain name does not infringe or violate a third party’s rights. Respondent submitted evidence purporting to prove what a Google search in December 2018 might have shown; as discussed above, Complainant persuasively refutes the accuracy of those searches. What Respondent does not say is that Respondent actually did such searches, or took any steps to meet his obligations under Paragraph 2.
In the end, it is Complainant’s burden to show that Respondent registered and used the domain name in bad faith; it is not Respondent’s burden to prove that he did not. Although the facts around Respondent’s due diligence at the time of registration are unclear, Complainant has not adduced facts that support a finding, by the preponderance of the evidence, that Respondent did register the domain name with any bad faith targeting of the Complainant.
In any event, Respondent has not used the domain name in bad faith. There are no pay-per-click links on the website to which the domain name resolves that infringe or otherwise seek to profit from the Complainant’s trademark rights, the Respondent has not specifically attempted to sell the domain name to the Complainant, and the Respondent’s general offer of sale does not appear to reflect any bad faith intention to profit from Complainant’s trademark.
For all of these reasons, the Panel finds that Complainant has failed to prove that Respondent registered and used the domain name in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <drmuscle.com> domain name REMAIN with Respondent.
David H. Bernstein, Panelist
Dated: April 19, 2019
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