Kenneth Gaughan v. Erik Rivera / Certapet LLC
Claim Number: FA1906001850153
Complainant is Kenneth Gaughan (“Complainant”), represented by Kenneth Gaughan, Washington DC, USA. Respondent is Erik Rivera / Certapet LLC (“Respondent”), represented by Anne-Marie Dao of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <therapetic.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 27, 2019; the Forum received payment on June 27, 2019.
On June 28, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <therapetic.org> 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 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 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 postmaster@therapetic.org. Also on July 3, 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 July 29, 2019.
A timely Additional Submission was received from Complainant on August 1, 2019.
On August 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
A timely Additional Submission was received from Respondent on August 6, 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.
A. Complainant
1. Respondent’s <therapetic.org> domain name is confusingly similar to Complainant’s THERAPETIC mark.
2. Respondent does not have any rights or legitimate interests in the <therapetic.org> domain name.
3. Respondent registered and uses the <therapetic.org> domain name in bad faith.
B. Respondent
1. Complainant obtained the THERAPETIC mark fraudulently.
2. Respondent’s <therapetic.org> domain name is not confusingly similar to Complainant’s THERAPETIC mark because Respondent offers services that are different from Complainant’s.
3. Respondent does have rights and legitimate interests in the <therapetic.org> domain name because it was legitimately purchased at auction from Complainant’s company, Therapetic Solutions, Inc. Complainant should be estopped from claiming infringement on the THERAPETIC mark.
4. Due to the above, Respondent did not register and does not use the <therapetic.org> domain name in bad faith.
5. The same court that has heard another case between Complainant’s company and Respondent should hear this case.
C. Complainant’s Additional Submission
1. Respondent has no right to use Complainant’s THERAPETIC mark; Complainant is separate from the entity Therapetic Solutions, Inc., which sold the <therapetic.org> domain name.
2. Respondent uses the <therapetic.org> domain name to compete with Complainant in the support animal certification business.
3. Due to the above, Respondent registered and uses the <therapetic.org> domain name in bad faith.
4. Respondent’s Response should be disregarded because Complainant was not properly copied on the email granting Respondent’s request for an extension of time.
D. Respondent’s Additional Submission
1. Complainant is not the legitimate owner of the THERAPETIC mark.
2. Complainant cannot prove bad faith registration of the <therapetic.org> domain name because it was legitimately purchased at auction.
3. Complainant should have objected to the Response at the time the extension was granted.
Complainant operates an emotional support animal certification business. Complainant holds a registration for the THERAPETIC mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,373,670, registered Jan. 9, 2018), which was assigned to him by Therapetic Solutons, Inc. Complainant was an Officer of Therapetic Solutions, Inc.
Respondent also operates an emotional support animal certification business, and obtained a judgment against Therapetic Solutions, Inc. in another cybersquatting/trademark infringement case.
Therapetic Solutions, Inc. sold the <therapetic.org> domain name to Respondent at auction.
Respondent uses the <therapetic.org> domain name to compete with Complainant.
Respondent received timely notice of the time extension granted to Respondent for its Response.
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.
PRELIMINARY ISSUE: DISPUTE OUTSIDE THE BOUNDS OF THE UDRP
This case is rife with factual contentions that are not conclusively established, but which directly bear upon the rightful ownership of the <therapetic.org> domain name. First and foremost is the question of whether the transfer of the THERAPETIC mark to Complainant was legitimate. While Complainant has recorded the Assignment transferring ownership from Therapetic Solutions, Inc. to Complainant, there are significant questions about the timing and nature of the transfer, given prior court proceedings between that company and Respondent pertaining to cybersquatting and trademark rights. While Respondent alleges, and Complainant does not deny, that Respondent purchased the <therapetic.org> domain name from Therapetic Solutions, Inc. at auction, no evidence was provided and there remain questions about the timing and the relationship between Complainant and the company that sold the domain name. The UDRP was not designed for and cannot accommodate a case so bound up in factual matters and legal matters that are not within the UDRP, such as fraud, infringement and estoppel. This case is better heard by a court, particularly where there have already been court proceedings involving the parties. This is not strictly a cyberquatting case and thus should not be resolved within the UDRP. See Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
Accordingly, it is Ordered that this proceeding be dismissed without prejudice.
Sandra J. Franklin, Panelist
Dated: August 8, 2019
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