Heliponix, LLC v. Groviv LLC
Claim Number: FA2201001981274
Complainant is Heliponix, LLC (“Complainant”), represented by Scott Massey, Indiana, USA. Respondent is Groviv LLC (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gropod.com>, registered with PSI-USA, Inc. dba Domain Robot.
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.
Hector Ariel Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 20, 2022; the Forum received payment on January 20, 2022.
On January 24, 2022, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <gropod.com> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2022 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@gropod.com. Also on January 25, 2022, 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 February 3, 2022.
Additional Submission was received on February 7, 2022.
On February 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hector Ariel Manoff 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is an agriculture technology company. Complainant has rights in the GROPOD mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. 5,741,894, registered Apr. 30, 2019 and filed on April 11, 2018). Complainant has been attempting to acquire the <gropod.com> domain name from Respondent for awhile. Respondent and Complainant have been in correspondence, with Complainant offering $1000, and rejecting a counteroffer of $20,000 from Respondent.
2. Groviv, LLC, the Respondent, is also an agricultural technology company that has developed an indoor cultivation system that exists within the controlled environment agriculture industry.
3. Respondent unsuccessfully applied for a trademark in the word “gropod”, unlike Complainant, who has one. Respondent is not authorized to use Complainant’s GROPOD mark.
4. Respondent is using Complainant’s GROPOD mark in a variety of contexts without Complainant’s permission (though none of Complainant’s cited activities involve the <gropod.com> domain name).
B. Respondent
1. Respondent is an agricultural technology company. Respondent has common law rights in the GROPOD mark. Respondent’s registration of the <gropod.com> domain name on Sep. 16, 2000, predates Complainant’s claimed rights in the mark.
2. Respondent has rights and legitimate interests in the GROPOD mark and <gropod.com> domain name through its common law rights in the mark. Respondent’s domain name registration predates Complainant’s claimed rights in the mark.
3. Respondent uses the GROPOD mark in connection with its legitimate agricultural business. Complainant has failed to establish any actual bad faith registration or use by Respondent.
C. Additional Submissions
1. Respondent failed not only to meet the requirements to establish a common law trademark by not providing any commercial examples that meet the USPTO criteria for “gropod” in use, but also to provide examples of claimed use prior to the complainant’s trademark filing dated April 11, 2018.
2. Respondent acquired ownership of the domain name <gropod.com> from the previous owner, but failed to acquire any rights associated with its now dead and abandoned “gropod” trademark from the previous owner.
Complaint owns a trademark registration GROPOD as from 2018. Respondent’s domain name predates the registration (2000).
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.
Complainant claims rights in the GROPOD mark through its registration with the USPTO (Reg. 5,741,894, registered Apr. 30, 2019). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <gropod.com> domain name is identical or confusingly similar to Complainant’s GROPOD mark. Under Policy ¶ 4(a)(i), adding the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. 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 finds that the disputed domain name is identical to Complainant’s mark.”). The disputed domain name incorporates the GROPOD mark in its entirety and adds the “.com” gTLD. Therefore, the panel agrees that Respondent’s domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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”).
The Panel finds that Respondent is not commonly known by the <gropod.com> domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS information, among other evidence, may demonstrate that Respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes that the WHOIS Information, along with the response, identifies Respondent as “Groviv, LLC”. See Registrar Verification Email; see also Response. Therefore, the Panel agrees that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Firstly, the Panel finds that Complainant’s references to Groviv, LLC entity details and precedents with the State of Utah are not relevant for the decision of the case.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
The Panel also notes that Respondent´s company GROVIV LLC and its associated firms according to Complainant´s references, “GROWGENIX SOLUTIONS LLC”, “GROW SOLUTIONS TECH LLC” and “GROV” includes the beginning GRO. This Panel finds this fact seems not to show that the domain name was not acquired in bad faith.
Complainant argues that they have reached out to “Groviv, LLC” extensively through emails offering $1,000 for the domain name, and eventually received a response from the email address “grov.media@grovtech.com” counter offering $20,000. This Panel finds that the delay in answering should not be interpreted per se as evidence of bad faith.
The Panel finds that the request for a better offer does not necessarily indicate bad faith. See Disney Enterprises, Inc. v. My Computer Tech Corp. FA1007001335838, September 6, 2010. (finding that “Respondent's request for "a better offer" does not establish that Respondent registered the domain name at issue primarily for the purpose of transferring the domain name registration to the Complainant for more that its documented out-of-pocket costs directly related to the domain name. See Mark Warner 2001 v. Larson, FA 95746 (Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because the respondent did not register the domain name with the intent to sell it to the complainant or one of its competitors).
The Panel notes that if Respondent’s registration of the <gropod.com> domain name predates Complainant’s first claimed rights in the GROPOD mark, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”). The disputed domain name was registered in 2000, years before Complainant’s registered trademark. Compare WHOIS Information with Compl. Ex. 2
This panel finds that Complainant has failed to establish any examples of bad faith registration or use. Under Policy ¶ 4(a)(iii), past panels have failed to find bad faith registration and use where Complainant failed to prove such. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)).
The Panel finds that Respondent is using the disputed domain name in relation to its own agricultural technology business. See Resp. Exs. 1 – 5. Therefore, the Panel finds Respondent did not register the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel concludes that Respondent did not register the <gropod.com> domain name in bad faith as its registration predates Complainant’s claimed rights in the GROPOD mark. Under Policy ¶ 4(a)(iii), where its registration predates Complainant’s rights in the mark, past panels have failed to find bad faith on behalf of Respondent. See Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the complainant had not met its burden of proof to show respondent lacked rights or legitimate interests in a domain name when respondent’s registration of that domain name occurred before the complainant had established rights in its alleged mark). The Panel notes that the disputed domain name was registered in 2000, years before Complainant’s registered trademark. Compare WHOIS Information with Compl. Ex. 2.
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 <gropod.com> domain name REMAIN WITH Respondent.
Héctor Ariel Manoff, Panelist
Dated: February 21, 2022
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