Stall & Dean Manufacturing Co., Inc. v. EFF, LLC dba Stall & Dean
Claim Number: FA2106001950937
Complainant is Stall & Dean Manufacturing Co., Inc. (“Complainant”), represented by Samuel J. Sussman of Hamilton, Brook, Smith & Reynolds, P.C., Massachusetts, USA. Respondent is EFF, LLC dba Stall & Dean (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stallanddean.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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 14, 2021. The Forum received payment on June 14, 2021.
On June 14, 2021, Network Solutions, LLC confirmed by e-mail to the Forum that the <stallanddean.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 June 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2021 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 June 21, 2021, 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 July 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 runs a sports clothing business for major and minor league teams. Complainant has rights in the STALL & DEAN mark through its registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <stallanddean.com> domain name is identical or confusingly similar to Complainant’s mark.
Respondent lacks rights and legitimate interests in the <stallanddean.com> domain name. Complainant originally registered and used the domain name before granting Respondent license to use it. Respondent is not commonly known by the domain name, and all licenses or authorizations by Complainant to use its STALL & DEAN mark and/or the <stallanddean.com> domain name have expired or been terminated. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the domain name’s resolving website.
The domain name is currently being used in bad faith. Respondent is continuing to use a domain name that was previously operated under authorization provided by a licence agreement, after the authorization terminated. Respondent is using a domain name that attracts traffic because of the prior authorized use and Complainant’s products, trademark, and tradename. The current content of Respondent’s website lacks any connection to the domain name and Respondent’s website does not currently offer any goods and services. The only value that the domain name <stallanddean.com> provides to Respondent is derived from the unauthorized use of Complaint’s trademark and the confusion that Respondent’s use creates. Therefore, it is apparent that the domain name provides no benefit to Respondent except for use in cybersquatting.
Respondent failed to submit a Response in this proceeding.
Complainant has failed to establish all the elements entitling it to relief.
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”).
Complainant has shown that it has rights in the STALL & DEAN mark through its registration with the USPTO, Reg. 3,085,744, registered on April 25, 2006. The Panel finds Respondent’s <stallanddean.com> domain name to be identical to Complainant’s mark as it incorporates the mark phonetically in its entirety and adds the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent 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 Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The evidence before the Panel shows that the <stallanddean.com> domain name was originally registered by Complainant on January 24, 2000. On April 27, 2001 Complainant applied to the USPTO to register the STALL & DEAN mark and registration was granted on April 25, 2006. On April 13, 2001 Complainant licensed certain intellectual property including the <stallanddean.com> domain name to a company called Ebbets Field Flannels Inc. for a period of 10 years and on December 12, 2001 Complainant consented to an assignment of that licence agreement to Respondent. The licence agreement expired in 2011.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), paragraph 2.11:
“At what point in time of respondent conduct do panels assess claimed rights or legitimate interests?
Panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint.
Without prejudice to the complainant’s duty to establish that a domain name has been registered and used in bad faith, a respondent claiming a right or legitimate interest in a domain name for example based on a prior agreement or relationship between the parties or based on past good-faith use (thus demonstrating merely a past right or legitimate interest) would not necessarily have rights or legitimate interests in the domain name, at the time a decision is rendered.”
Complainant asserts that, at this time, Respondent has no rights or legitimate interests with respect to the <stallanddean.com> domain name because (a) except under license rights that no longer exist, Respondent has not used, or shown demonstrable preparations to use, the domain name in connection with the legal or legitimate bona fide offering of goods or services; (b) except under license rights that no longer exist, Respondent has not been commonly known by the domain name <stallanddean.com> or by the terms “Stall & Dean” or “stallanddean” and has acquired no trademark or service mark rights therein; (c) Respondent is not making legitimate non-commercial or fair use of the domain name; and (d) Complainant is no longer licensing or otherwise permitting Respondent to use its STALL & DEAN trademark, nor is it licensing or otherwise permitting Respondent to use any domain name incorporating that mark or any similar term.
These circumstances, coupled with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
In the present case the precise date on which the domain name was registered by Respondent is not apparent on the evidence before the Panel. However, it is more likely than not that this was upon or shortly after the assignment to Respondent of the right to use the domain name in December, 2001. In correspondence between the parties earlier this year, Complainant said:
“…I must move forward with my other business opportunities. That includes regaining control over the URL address <stallanddean.com> which under our original agreement was a domain that you could actively use in connection the licensed business, but clearly and unambiguously was always owned by me”
To which Respondent replied:
“In regard to 'stall&dean.com' the domain does not belong to you”.
Accordingly, although the parties are in dispute as to whether Complainant is presently entitled to the domain name (an issue which would be more appropriately determined by a court) the Panel concludes that, on Complainant’s own evidence, Respondent registered the domain name when authorized by Complainant to use the domain name and did so in good faith in pursuance of the license agreement.
Under these circumstances, even assuming (without concluding) that Respondent’s present use of the domain name and its failure to return the domain name to Complainant following termination of the license agreement constitutes use in bad faith, such bad faith use does not demonstrate registration in bad faith.
The present circumstances are similar to those in Green Tyre Company Plc. v. Shannon Group, WIPO Case No. D2005-0877 (October 5, 2005), in which, at the time of registration, the Respondent was a licensed, authorized distributor of the Complainant’s branded products. The Panel found that circumstances which are of a later date than the registration of the domain name cannot lead to the conclusion that the original registration in good faith in retrospective has become a registration in bad faith.
Accordingly, the Panel determines that Complainant has failed to show that Respondent registered the domain name in bad faith.
Complainant 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 <stallanddean.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: July 21, 2021
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