CFY LLC v. Domain Sales - (Expired domain caught by auction winner) c/o Dynadot
Claim Number: FA2304002038808
Complainant is CFY LLC (“Complainant”), represented by Peter Nussbaum of Chiesa Shahinian Giantomasi PC, New Jersey, USA. Respondent is Domain Sales - (Expired domain caught by auction winner) c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <parentingwithgal.com> and <hearttsharing.com>, registered with Dynadot, 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 Forum electronically on April 4, 2023; Forum received payment on April 4, 2023.
On April 5, 2023, Dynadot, LLC confirmed by e-mail to Forum that the <parentingwithgal.com> and <hearttsharing.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 April 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2023 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@parentingwithgal.com, postmaster@hearttsharing.com. Also on April 6, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On May 1, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <parentingwithgal.com> and <hearttsharing.com> domain names are confusingly similar to Complainant’s PARENTING WITH GAL and HEARTTSHARING marks.
2. Respondent does not have any rights or legitimate interests in the <parentingwithgal.com> and <hearttsharing.com> domain names.
3. Respondent registered and uses the <parentingwithgal.com> and <hearttsharing.com> domain names in bad faith.
B. Respondent did not file a Response.
Complainant, CFY LLC offers psychotherapy and counseling products and services and claims common law rights in the PARENTING WITH GAL and HEARTTSHARING marks.
Respondent registered the <parentingwithgal.com> and <hearttsharing.com> domain names on February 25, 2023, and offers them for sale.
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 asserts common law rights in the PARENTING WITH GAL and HEARTTSHARING marks. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). A mark can generate secondary meaning sufficient to establish complainant’s common law rights when consistent and continuous use of the mark has created distinctive and significant good will under Policy ¶ 4(a)(i). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant provides screenshots of Complainant’s Instagram page and website, claiming use of the marks since January and March 2021. However, the screenshots provided by Complainant are dated April 4, 2023, and there is no evidence demonstrating prior use. There is also no evidence of advertising expenditures or recognition among consumers. Complainant uses cfy@cfyservices.com and has a website at www.positiveparentingandrelationships.com, neither of which reflect the PARENTING WITH GAL or HEARTTSHARING marks. The Panel also notes Complainant’s pending trademark applications, filed in February of 2023, with first use dates of February of 2023, and March of 2022; these dates do not correspond with those alleged by Complainant in its Complaint, namely use dating back to 2021.
For all of the above reasons the Panel finds that Complainant has not satisfied Policy ¶ 4(a)(i), as it has not conclusively demonstrated that the PARENTING WITH GAL and HEARTTSHARING marks have acquired secondary meaning and has not demonstrated common law rights in the marks. Since Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy, as the Complaint cannot succeed without satisfying all three elements. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
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 <parentingwithgal.com> and <hearttsharing.com> domain names REMAIN WITH Respondent.
Sandra J. Franklin, Panelist
Dated: May 2, 2023
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