Damijan Tuscana/Medellin Living, LLC v. Brad Hinkelman
Claim Number: FA2202001984731
Complainant is Damijan Tuscana/MedellinLiving LLC (“Complainant”), represented by Kurt Hausy, Florida, USA. Respondent is Brad Hinkelman (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medellinliving.com>, registered with GoDaddy.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2022; the Forum received payment on February 17, 2022.
On February 18, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <medellinliving.com> 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 February 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@medellinliving.com. Also on February 22, 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 March 14, 2022.
On March 15, 2022, Complainant submitted an additional statement.
On March 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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
Complainants, Damijan Tuscana and Medellin Living LLC, have rights in the MEDELLIN LIVING mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) on Dec. 4, 2018. Respondent’s <medellinliving.com> domain name is identical to Complainant’s MEDELLIN LIVING mark.
Respondent lacks rights or legitimate interests in the <medellinliving.com> domain name as Respondent has no legal ownership to the disputed domain name.
It is unknown if Respondent registered the <medellinliving.com> domain name in bad faith.
B. Respondent
The <medellinliving.com> domain name was originally registered by a third party. Respondent, Complainant’s agent Kurt Hausy, and a third individual jointly purchased certain assets, including the domain name, from such third party on February 1, 2016.
Our position is that this is bad faith, if not fraudulent domain transfer request based on the exhibits presented here within.
C. Complainant’s Additional Submission
Kurt Hausy is Complainant’s authorized representative, not the Complainant in this proceeding. Respondent’s arguments are irrelevant as Complainant holds trademark rights in the MEDELLIN LIVING mark.
i. Complainant has demonstrated its ownership of rights in the trademark MEDELLIN LIVING and the <medellinliving.com> domain name is identical to such mark;
ii. Complainant has not met its burden of showing that Respondent lacks rights or legitimate interests in the disputed domain name as the <medellinliving.com> website is directed at people living in Colombia and evidence is lacking that Complainant’s trademark rights extend to that country;
iii. Complainant has not met its burden of showing that Respondent registered the <medellinliving.com> domain name in bad faith as Respondent’s acquisition of the disputed domain name predates the earliest date on which Complainant has submitted proof of its trademark rights; and
iv. Bad faith use is not proven where there is an open question of whether Respondent is making a bona fide offering of services under the <medellinliving.com>.
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 asserts rights in the trademark MEDELLIN LIVING based on registration of the mark with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO). As Complainant provides a screenshot from the USPTO website evidencing its claimed registration, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <medellinliving.com> domain name is identical to Complainant’s MEDELLIN LIVING mark. Under Policy ¶ 4(a)(i), when a disputed domain name incorporates an entire mark and simply adds a generic top-level domain, it may be found to be identical to the asserted mark. 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.”); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name ‘.com.’”) Here, the Panel finds that the <medellinliving.com> domain name is identical to the MEDELLIN LIVING 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Policy ¶ 4(c) offers examples of common scenarios that may indicate the existence of rights or legitimate interests in a Respondent. The Complaint does not mention any of these but states only that “[t]he domain name is identical to our registered trademark and registered business entity and is being used by someone who has no legal ownership.”
Policy ¶ 4(c)(i) provides that rights or legitimate interests may exist where the Respondent uses the disputed domain name for a bona fide offering of goods or services. Respondent states that “MedellinLiving.com is a Colombian website focused on English content for readers in Medellin, Colombia, South America”. Although no image of the website is provided by either party, the Panel has browsed to this address and notes that the phrase “MEDELLIN LIVING” appears at the top. Below that, the site contains links titled “Accommodations”, “Nightlife”, “Travel”, “Investing/Legal”, “Life”, and “Arts/Culture”, and numerous articles on these subjects are provided in the English language. One is titled “Popular Neighborhoods for Expats Living in Medellín” and another is “How to Make Friends in Medellín”. It is axiomatic that trademark rights are territorial and use of a mark in one country may not implicate the rights of a trademark owner in another country. See, e.g., MeisterLabs GmbH v. Wang Xiaobing, Shenzhen Edraw Software Co., Ltd., and Wondershare Technology Co. Ltd., DIO2021-0008 (WIPO July 2, 2021) (“Trademark rights are territorial in nature. National trademark laws often permit a party to obtain registered trademark rights in that jurisdiction even where it is clear that the party has deliberately chosen that trademark having seen the use of that name in another jurisdiction.”) In its additional submission, Complainant asserts that “the trademark attached to the original Complaint covers our business interests in Colombia and the US.” However, the Panel notes that the USPTO does not have jurisdiction that extends to the country of Colombia and, as such, Complainant’s trademark registration does not have effect there. As Complainant’s only asserted trademark registration was issued by the USPTO and Respondent claims that its website is intended for readers in Colombia, the Panel finds that Complainant has not met it burden of establishing, by a preponderance of the evidence, a prima facie case in support of its assertion that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Next, though not specifically mentioned by Complainant, the Panel notes that a respondent may demonstrate rights or legitimate interests when the respondent is commonly known by the disputed domain name. Under Policy ¶ 4(c)(ii), WHOIS information can be considered when determining if a respondent is or is not commonly known by the disputed domain. See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.”); see also Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information stated in the WHOIS record was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS record for the <medellinliving.com> domain name lists the registrant as “Brad Hinkelman” which shows no similarity to Complainant’s mark. The Panel also notes, as mentioned above, that Respondent’s website displays the phrase “MEDELLIN LIVING” at the top and the site appears to offer articles and information regarding the city of Medellin, Colombia. However, while the website does shows use of the phrase “MEDELLIN LIVING”, there is nothing in the record attesting to the reputation of the site or the disputed domain name. As such, the Panel cannot determine from the available evidence whether Respondent is commonly known by this phrase or the <medellinliving.com> domain name under Policy ¶ 4(c)(ii).
For the reasons stated above, the Panel finds that Complainant has not met its prima facie burden of demonstrating that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
In order to succeed in its claim, Complainant must prove all three elements under the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (“Complainant must prove all three elements under Paragraph 4(a) of the Policy to prevail in this proceeding.”) On the topic of Policy ¶ 4(a)(iii), the Complaint’s entire statement on the disputed domain name is “[i]t is unknown if it was implemented in bad faith”. In its additional submission, Complainant states that “we are a registered company with a registered trademark like Ford Motor company, you can’t use our name for your blog no matter when you started it.” Giving Complainant the benefit of the doubt that this latter statement is an assertion of bad faith, it is noted that Complainant has cited only its USPTO registration and has thus not submitted any evidence that it possesses trademark rights in Colombia, the location to which Respondent asserts that the <medellinliving.com> domain’s activities are directed.[i] The resolution of any claim that Respondent’s activities are an infringement of Complainant’s trademark rights would require a far more thorough evidentiary and pleading record than has been presented by the parties here.
Further, the timing of a domain name acquisition in relation to asserted trademark rights is a common and critical issue in many cases. LocalMonero Co., Limited v. W CHAN, FA 1761479 (Forum Feb. 7, 2018) (“it is axiomatic that Respondent could not have committed bad faith before Complainant acquired rights in Complainants Mark”.) The Panel notes Respondent’s submission into evidence of a “Bill Of Sale” in which certain assets, including the <medellinliving.com> domain name, were transferred from a prior owner to a triumvirate consisting of Respondent, Mr. Kurt Hausy (Complainant’s Representative in these proceedings), and a third individual on February 1, 2016[ii]. A review of Complainant’s submitted USPTO registration reveals that it was filed on March 20, 2018 and issued on December 4, 2018. It further claims that the mark was first used in commerce in the US on December 1, 1983, however, Complainant has not asserted any such longstanding use of its mark nor has it submitted any evidence thereof. Its only other substantive submission is a copy of Electronic Articles of Organization in the state of Florida dated February 20, 2018 in which the named individual Complainant, Damijan Tuscana, is listed as the Registered Agent for forming the entity Medellin Living, LLC. As there is no evidence submitted by either party in this case that Mr. Tuscana was associated with the MEDELLIN LIVING mark prior to the formation of this corporate entity and in light of the filing date of Complainant’s USPTO registration, the Panel is unable to determine whether Complainant possessed any trademark rights as of the 2016 acquisition of the disputed domain name by Respondent and its business partners. As such, bad faith registration of the <medellinliving.com> domain name by Respondent’s 2016 acquisition is not proven.
Finally, as noted above, there is an open question of whether Respondent is making a bona fide use of the disputed domain name. This precludes a finding of bad faith use in this case. Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”)
For the reasons stated above, the Panel finds that Complainant has not met its burden of demonstrating that Respondent registered or uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
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 <medellinliving.com> domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: March 24, 2022
[i] No evidence is presented as to the location of any servers used by Respondent to host its website.
[ii] Mr. Hausy subsequently sold his interest in this business to the third individual in an August 9, 2017 “Purchase of Share Agreement” that has been submitted into evidence by Respondent.
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