1919, LLC v. pingable Wong / pingable inc.
Claim Number: FA2007001905038
Complainant is 1919, LLC (“Complainant”), represented by Jonathan Gardner of Kavinoky Cook LLP, Pennsylvania, USA. Respondent is pingable Wong / pingable inc. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1919.com>, registered with NameCheap, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2020; the Forum received payment on July 20, 2020.
On July 21, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <1919.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 July 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2020 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@1919.com. Also on July 22, 2020, 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 August 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
A. Complainant
Complainant made the following contentions.
Complainant is a creative marketing studio specializing in lifestyle brands. Complainant has common law rights in the 1919 mark due to its longstanding use in commerce and the media. Respondent’s <1919.com> domain name is identical to Complainant’s 1919 mark. Respondent incorporates the mark in its entirety and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <1919.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to Complainant’s own website.
Respondent registered and used the <1919.com> domain name in bad faith as Respondent has been subject to prior UDRP decisions which shows a pattern of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a creative marketing studio specializing in lifestyle brands.
2. Complainant has established its common law rights in the 1919 mark due to the longstanding use of the mark in trade and commerce and that such rights have existed since at least 2002.
3. Complainant registered the <1919.com> domain name domain name in the year 2001. In or about the year 2004, an employee of Complainant, namely Alan Wong, wrongfully caused the domain name to be registered in his own name as registrant. On or about June 21, 2011 Respondent wrongfully registered the domain name by way of transfer from Alan Wong who had no authority to transfer the domain name to Respondent.
4. Respondent does not have and has never had a right or legitimate interest in the domain name.
5. The evidence shows that Respondent registered and has used the disputed domain name 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.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant does not have a registered trademark but submits that it has common law rights in the 1919 mark due to its longstanding use of the mark in media and commerce. Common law rights may be established by demonstrating a longstanding use of the mark through media and commerce per Policy ¶ 4(a)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are adequate to sustain its claim of common law rights in the MELLO and MELLO SOLAR marks.”). It is, however, up to a Complainant to prove that common law rights have been established on the facts and that can only be done by evidence. This requirement for evidence is often overlooked , but not in the present case, where Complainant has obviously gone to some trouble to marshal the evidence and has done so in a persuasive manner. Thus, it has adduced evidence that 1919 was conceived as the name of the Complainant company and has remained the name that it has used since then in its business in what must surely be an industry where brands and names as the source of goods and services must be of particular importance. Moreover, Complainant has produced evidence of the publication of a book where the name 1919 is declared to be the company that conceived and produced the book and detailed evidence of the use of 1919 in Complainant’s stationary, business cards, notepads and letter heads. Most importantly, because today the first port of call of a business is the home page of its website, evidence has been produced of the home page of Complainant’s web site where extensive use of and promotion of its 1919 name and logo abound. Thus, Complainant has provided the Panel with details of its use of the 1919 mark in trade and commerce since as early as 2002 and continuously since then. Therefore, the Panel finds that Complainant has adequately shown its common law trademark rights in the 1919 mark per Policy ¶ 4(a)(if) and that those rights have existed since at least 2002.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s 1919 mark. Complainant argues that Respondent’s <1919.com> domain name is identical to Complainant’s 1919 mark. Registration of a domain name that contains a mark in its entirety and adds a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Here, Complainant argues that Respondent incorporates the mark in its entirety and adds the “.com” gTLD. The Panel agrees and finds that Respondent’s domain name is identical to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s 1919 trademark and to use it in its identical domain name;
(b) Respondent registered the <1919.com> domain name on or about June 21, 2011;
(c) Respondent has caused the disputed domain name to resolve to Complainant’s own website;
(d) Respondent has acquired and retained the domain name and engaged in the aforementioned activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <1919.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the 1919 mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “pingable Wong/pingable inc.” and there is no other evidence to suggest that Respondent was authorized to use the 1919 mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to Complainant’s own website. Use of a disputed domain name to resolve to a complainant’s own webpage is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Here, Complainant argues that the facts show that a former employee, Alan Wong, registered the domain name in his own name without any authority to do so and apparently subsequently enabled the registration to be transferred to the current registrant. The current registrant has since taken control of the domain name while still redirecting users to its site. Complainant provides screenshots of the disputed domain name and also provides information pertaining to the ownership of the disputed domain name over time. See Compl. Ex. C. As the Panel agrees, it finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <1919.com> domain name in bad faith because of the circumstances pertaining to the registration and use. As has been stated, the domain name was originally acquired by Complainant and registered in its name as registrant. A then employee of Complainant, Mr. Alan Wong transferred the registration into his own name as registrant. He had no authority to do that and no authority to assist in the subsequent transfer of the registration to Respondent. The result is that Respondent has control of the domain name and its corresponding website without any authority to acquire the domain name from Mr. Wong. These facts enable the Panel to draw the conclusion that the registration of the domain name in the name of Respondent was in bad faith because Respondent had no right to have the domain name registered in its name. Moreover, this must also be described as a case of use in bad faith as Respondent has no authority to use a domain name it had no right to register. The Panel therefore finds that the domain name was registered and used in bad faith.
Secondly, Complainant argues that in similar cases to the present where a technical consultant registered a domain name that incorporates a Complainant’s mark and then does not transfer ownership to Complainant, such conduct will give rise to a finding of bad faith registration and use. The Panel agrees, subject of course to the facts of a given case. In the present case, the Panel’s view is that the case has been made out on the evidence. See the analogous case of Michael Aiduss LLC v. UDRP, FA 1549535 (Forum May 6, 2014). Therefore, the Panel finds that Respondent’s actions constitute bad faith registration and use per Policy ¶ 4(b)(ii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <1919.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 17, 2020
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