Clipper Magazine, LLC v. Robert King / Synergy Marketing Group
Claim Number: FA2002001882874
Complainant is Clipper Magazine LLC (“Complainant”), represented by Clay LaPoint of Pirkey Barber PLLC, Austin, Texas. Respondent is Robert King / Synergy Marketing Group (“Respondent”), Port Orange, Florida.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <reachfl.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.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2020; the Forum received payment on February 11, 2020.
On February 13, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the disputed domain name <reachfl.com> 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 17, 2020, the Forum served the Complaint and all Exhibits, including a Written Notice of the Complaint, setting a deadline of March 9, 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@reachfl.com. Also on February 17, 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.
A timely Response was received and determined to be complete on March 9, 2020.
On March 12, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, 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
a. Complainant is an industry-leading provider of direct-mail and Internet advertising goods and services throughout the United States of America.
b. The publications are centered around information on local businesses and reach over 22 million homes annually.
c. With the trademark REACH Complainant provides coupons, advertisements, and information for local, regional, and national restaurants, entertainment venues, and other businesses.
d. Complainant has rights in the REACH trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”), Registration No. 1,528,222, registered on March 7, 1989, in international class 16 and Registration No. 1,530,003, registered on March 14, 1989 in international class 35 (Exhibit C to the Complaint).
e. The disputed domain name <reachfl.com> is identical or confusingly similar to Complainant’s trademark as it incorporates Complainant’s trademark REACH, tacking on the state code for Florida, “FL” and the “.com” generic top-level domain.
f. Respondent lacks rights or legitimate interests in the disputed domain name <reachfl.com>. Complainant has not licensed or otherwise permitted Respondent to use the trademark.
g. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the trademark REACH on the disputed domain name to promote Respondent’s own magazine, which is unaffiliated with Complainant.
h. Respondent is a direct competitor of Complainant as it offers the same services, such as, direct-mail publications and magazines.
i. Respondent registered and uses the disputed domain name <reachfl.com> in bad faith. Respondent uses the disputed domain name to offer publications similar to those offered by Complainant, thereby creating a likelihood of confusion with Complainant.
j. Respondent knew of Complainant’s mark before beginning use of the disputed domain name given the widespread distribution of Complainant.
B. Respondent
a. Respondent had no intention of violating Complainant’s trademark when it registered the disputed domain name.
b. Respondent has removed any instance of “Reach” magazines from the disputed domain name.
1. Complainant owns the trademark REACH in the United States of America, in international classes 16 and 35 with Registration Number Registration No. 1,528,222, of March 7, 1989, and Registration No. 1,530,003, of March 14, 1989, respectively, that is, since before the disputed domain name was registered by Respondent.
2. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.
3. Respondent is not affiliated with Complainant in any way. Respondent is a direct competitor of Complainant as it offers the same services, such as, direct-mail publications and magazines
4. Respondent registered 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.
Complainant contends to be the owner of the trademark REACH in the United States of America to cover goods within international class 16 and services within international class 35.
i) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of trademark rights. As a matter of general principle, industrial property rights are typically acquired by registration before a competent office.
The generally accepted definition of a trademark involves the concept of a distinctive force as the most relevant element. It is this “distinctiveness” that gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force and the owner is granted with an exclusive right over the trademark, which entitles him or her to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[i] and thus, it is well established that a complainant is not required to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant has proven its rights in the trademark REACH (Exhibit C to the Complaint).
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with goods and services of international classes 16 and 35. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark REACH for purposes of Paragraph 4(a)(i) of the Policy.
ii) Identity or confusing similarity between the disputed domain name and Complainant’s trademark
Complainant alleges that the disputed domain name is confusingly similar with Complainant’s trademark REACH.
In the first place, before establishing whether or not the disputed domain name <reachfl.com> is confusingly similar to Complainant’s trademark REACH, the Panel wants to point out that the addition of generic top-level domains (gTLDs), e.g., “.com,” “.biz,” “.edu,” or “.org”, may be disregarded when determining if the disputed domain name is identical or confusingly similar to the registered trademark[ii].
UDRP Panels have unanimously accepted that the inclusion of the “.com” gTLD in a disputed domain name may be disregarded in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico, D2000-0477 (WIPO July 25, 2000), the panel stated:
“The addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services”.
The Panel considers that the reproduction of the trademark REACH, by the disputed domain name <reachfl.com>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[iii], mainly since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is Complainant. Thus, by registering the disputed domain name, Respondent creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the domain names.
In addition, the Panel agrees with the Complainant on the conclusion that including the term “fl” is not sufficient to make the disputed domain name different from the trademark REACH.
In fact, “fl” is the geographical indicator for the State of Florida, where the Respondent has its domicile. Thus, it is a descriptive element. Considering Complainant’s wide presence, the disputed domain name is likely to be understood by consumers as a Florida division of Complainant’s business. Respondent merely adds a descriptive expression “fl” to the distinctive trademark REACH. This addition rather than distinguishing the disputed domain name from Complainant’s trademark makes it confusingly similar to the trademark. Hence, the disputed domain name should be deemed as confusingly similar to the registered trademark[iv].
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark REACH and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[v].
In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a Complainant is required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[vi]. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <reachfl.com> because of the following: i) Complainant has not authorized Respondent to use Complainant’s trademarks for any purpose, neither has license them in any way to Respondent; ii) Respondent is a direct competitor of Complainant as it offers the same services, such as, direct-mail publications and magazines; iii) Respondent has not used and is not using the disputed domain name in connection with a bona fide offering of goods or services; and iv) Respondent has not made and is not making a legitimate noncommercial or fair use of the domain name.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:
(i) Before any notice of the dispute, Respondent’s use 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 you have 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 consumers or to tarnish the trademark or service mark at issue.
Respondent states to have updated all files and have removed any instance of "Reach" Magazines.
Nonetheless, Complainant shows how Respondent has used a very similar font type and design in the website to which the disputed domain name resolves.
Given the above, the Panel considers the following:
1. Respondent did not provide any evidence concerning use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
2. The use of the disputed domain name proved by Complainant, cannot be qualified as bona fide offering of goods or services as the closeness of the font type and the inclusion of a similar design, clearly intended to mislead consumers.
3. It is not possible to legitimate any deceiving conduct as a bona fide offering of goods or services.
4. Respondent did not provide any evidence supporting the absence of a trademark violation, as the sign use remains the same with a different font type and the goods and services provided remain unchanged, which create the risk of confusion.
5. Respondent use of Complainant’s trademark as part of the disputed domain name also misleads visitors into thinking that Complainant is somehow connected to Respondent.
6. Moreover, there is no evidence to support that Respondent is and/or has been commonly known by the disputed domain name.
7. Finally, Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, since the use of a similar font type and design is misleading and Respondent’s use of Complainant’s trademark as part of the disputed domain name also misleads visitors into thinking that Complainant is somehow connected to Respondent.
This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain names.
Furthermore, Respondent never explained the reason for choosing the expression REACH to be part of its domain name.
Consequently, Respondent knew or should have known of Complainant’s trademarks REACH since Complainant’s trademarks are included in the resolving website. Yet Respondent incorporated said trademarks in the disputed domain name. Thus, Respondent used the trademarks REACH to create a likelihood of confusion aimed to divert consumers to Respondent’s offered products and services.
Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with as Respondent lacks any right or legitimate interest in the disputed domain name.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that Respondent has registered or has 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her 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 his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith, since Respondent knew or should have known of the trademark REACH[vii].
The Panel agrees with Complainant. The fact that Respondent chose the word “REACH” to make up the disputed domain name is, in this Panel’s view, evidence per se of bad faith. The Panel finds this selection was deliberate and not product of chance since the design use in the resolving websites mimics Complainant’s “look and feel”.
Respondent simply could not have been unaware of Complainant’s rights. Thus, the Panel finds Respondent deliberately took someone else’s trademark to register a domain name and to create a business around it.
Thus, this Panel considers that the mere fact of knowingly incorporating a third-party’s trademark in a domain name constitutes registration in bad faith[viii]. See Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Direct Navigation Data Inc., WIPO Case No. D2012-1448, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
In addition, the Panel considers that Respondent must have known that the word “reach” within the disputed domain name would attract Internet users seeking Complainant’s trademark, to the website from which expected to earn money. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark.
Furthermore, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website due to the inclusion of Complainant’s trademark in the disputed domain name and its design in the website. Hence, consumers would not able to differentiate the source of origin, creating a likelihood of confusion with Complainant’s mark and making consumers believe there was a relationship of sponsorship, affiliation, or endorsement between Complainant and Respondent, is indicative of bad faith registration and use pursuant to Policy ¶ 4(b).
Finally, the incorporation of Complainant’s trademark in the disputed domain name and the use of Complainant’s trademarks within the website can also disrupt Complainant’s business, which is indicative of bad faith registration and use pursuant to Policy ¶ 4(b).
Therefore, the three elements of the Policy ¶ 4 are satisfied in the present case in respect to Respondent of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the disputed domain name <reachfl.com> be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: March 26, 2020
[i] See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also The British Broadcasting Corporation v. Jamie Renteria, D2000-0050 (WIPO Mar. 27, 2000).
[ii] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Forum May 18, 2012).
[iii] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[iv] See Forest Laboratories, Inc. v. candrug, D2008-0382 (WIPO April 24, 2008) (“when a respondent merely adds generic or descriptive terms to a distinctive trademark, the domain name should be considered confusingly similar to the registered trademark”.); see also Bayer Aktiengesellschaft v. Monseen, D2003-0275 (WIPO May 30, 2003).
[v] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO Apr. 24, 2012).
[vi] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 1, 2000).
[vii] See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, WIPO Case No. D2012-0474.
[viii] See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, supra.
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