Kevin Ouzts / The Spotted Trotter, LLC v. Privacy Administrator / Anonymize, Inc.
Claim Number: FA2007001903959
Complainant is Kevin Ouzts / The Spotted Trotter, LLC (“Complainant”), represented by David E. Malick of WEINBERG, WHEELER, HUDGINS, GUNN AND DIAL, LLC, Alabama, USA. Respondent is Privacy Administrator / Anonymize, Inc. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spottedtrotter.com> (the disputed domain name”), registered with Epik Inc. (the “Registrar”).
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2020; the Forum received payment on July 13, 2020.
On July 14, 2020, the Registrar confirmed by e-mail to the Forum that the <spottedtrotter.com> disputed domain name is registered with Epik, Inc. and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Epik, Inc. 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 July 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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@spottedtrotter.com. Also on July 21, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
Complainant’s counsel submitted a message to the Forum, informing that he had switched law firms and sent his new contact information.
On August 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a butcher shop and catering service that has operated continuously since 2009. Complainant has rights in THE SPOTTED TROTTER common law trademark through use of the trademark in commerce since July 30, 2010 and also has a pending trademark application for THE SPOTTED TROTTER, serial number 90/041619 in international classes 29, 35 and 43, before the United States Patent and Trademark Office (“USPTO”) (collectively, “THE SPOTTED TROTTER Mark”). Respondent’s <spottedtrotter.com> disputed domain name is identical or confusingly similar to Complainant’s THE SPOTTED TROTTER Mark.
Respondent lacks rights or legitimate interests in the <spottedtrotter.com> disputed domain name. Complainant has not authorized or licensed Respondent to use THE SPOTTED TROTTER Mark. Further, Respondent has no rights or legitimate interests in the <spottedtrotter.com> disputed domain name as it resolves to an inactive website and also invites Internet users to purchase the disputed domain name.
Respondent registered and is using the <spottedtrotter.com> disputed domain name in bad faith since has intercepted and withheld business inquiry emails to Complainant. Respondent registered the disputed domain name with constructive and actual knowledge of Complainant's rights in THE SPOTTED TROTTER Mark due to Complainant's registration of the domain name <thespottedtrotter.com> years before Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds a common law and a pending federal trademark in THE SPOTTED TROTTER Mark. The disputed domain name is confusingly similar to Complainant’s THE SPOTTED TROTTER Mark. Further, the Panel concludes that Respondent lacks rights or legitimate interests in the use of the disputed domain name and that Respondent registered and is using 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 disputed 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 disputed domain name; and
(3) the disputed 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”).
The Panel finds that Complainant has common law rights in THE SPOTTED TROTTER Mark. Policy ¶ 4(a)(i) 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 trademark. 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.”). To establish common law rights in a trademark, a complainant generally must show extensive and continuous use in commerce and that consumers have come to associate the mark with the complainant as to the source of the goods. See Iacocca v. Tex. Int’l Prop. Assocs., FA 1088017 (Forum Nov. 29, 2007) (“In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, that consumers have come to associate the mark with Complainant as to the source of the goods.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant formed its company on December 18, 2009 and registered its company domain name <thespottedtrotter.com> on December 22, 2009. Complainant provides screenshots of Complainant's own website and photos of Complainant's products as proof of use of THE SPOTTED TROTTER common law trademark in commerce. As a result, the Panel concludes that Complainant holds common law rights in THE SPOTTED TROTTER Mark for purposes of Policy ¶ 4(a)(i).
The Panel next concludes that the disputed domain name is confusingly similar to THE SPOTTED TROTTER Mark under the Policy as the disputed domain name incorporates the trademark in its entirety except for the article “the”, followed by the generic Top-Level Domain (“gTLD “) “.com”. The omission of the article “the” and addition of the gTLD “com” in the disputed domain name are not sufficient to distinguish the disputed domain name from THE SPOTTED TROTTER Mark. See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
As Respondent did not respond to the Complaint, Respondent has not carried its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond.
Specifically, Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use THE SPOTTED TROTTER Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
In addition, Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent does not make an active use of the disputed domain name. Failure to make active use of a domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”).
Finally, Respondent offers the disputed domain name for sale, which does not convey rights or legitimate interests in a disputed domain name. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). As proof of the inactive landing page and general offer for sale of the disputed domain name, Complainant provides a copy of the resolving webpage of the disputed domain name which displays a parked webpage offering the domain name for sale.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
Registration and Use in Bad Faith
First, the Panel concludes that Respondent registered and is using the <spottedtrotter.com> disputed domain name in bad faith since Respondent offered to sell the disputed domain name for an amount in excess of its out-of-pocket registration costs. Such an offer to sell a disputed domain name can demonstrate bad faith registration and use under Policy ¶ 4(b)(i). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Second, Respondent registered and is using the <spottedtrotter.com> disputed domain name in bad faith as Respondent registered the domain name to intercept and withhold business email inquiries directed to Complainant. The use of a confusingly similar disputed domain name to divert Internet traffic from a complainant to a respondent for commercial gain can indicate bad faith registration and use per Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Third, the panel finds that Respondent registered the <spottedtrotter.com> disputed domain name in bad faith because Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the SPOTTED TROTTER Mark. Actual knowledge of a complainant’s mark prior to registering a disputed domain name is sufficient to establish bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Actual knowledge can be demonstrated by the registration by a respondent of a disputed domain name that includes a typographical error in a complainant's trademark. See New York Quality Healthcare Corporation d/b/a Fidelis Care v. Fidelis Care, FA 1912001873750 (Forum Jan. 13, 2020). In the present case, the disputed domain name was almost identical to the Complainant’s trademark except for the omission of the article “the” and addition of the gTLD “.com”.
Finally, Respondent registered and is using the disputed domain name in bad faith as Respondent does not make active use of the disputed domain name. Inactive holding of a disputed domain name may indicate bad faith registration and use per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays the error message “This site can’t be reached.” Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spottedtrotter.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: August 26, 2020
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