About, Inc. v. Neazur Rahaman
Claim Number: FA2105001944874
Complainant is About, Inc. (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is Neazur Rahaman (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thesprucetools.com>, registered with NameCheap, Inc.
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.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2021; the Forum received payment on May 13, 2021.
On May 13, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <thesprucetools.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 May 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2021 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@thesprucetools.com. Also on May 14, 2021, 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 May 28, 2021.
An Additional Submission was received on June 2, 2021 in compliance with Supplemental Rule 7.
On June 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon 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.
Respondent requests that the Panel deny Complainant’s request.
A. Complainant
Complainant argues that the disputed domain name is identical to Complainant’s THE SPRUCE word and logo trademarks as it wholly integrates Complainant’s THE SPRUCE with the addition of the descriptive term “tools” and a gTLD “.com” which do not distinguish the disputed domain name from Complainant’s trademarks.
Complainant also argues that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant further argues that the disputed domain name was registered and is being used in bad faith. Complainant contends that Respondent had full knowledge of Complainant’s trademarks and that the disputed domain name was registered to confuse, mistake or deceive consumers who are seeking Complainant’s website.
B. Respondent
Respondent submitted a Response to Complainant’s contentions, asserting that he was not aware of Complainant and its trademarks and that he has been using the disputed domain name as a personal blog site for blogging about power and hand tools. Therefore Respondent asserts he did not register or is using the disputed domain name in bad faith. Respondent further argues that the mark THE SPRUCE is generic, refers to the name of a tree and that he saw many websites that contain the word “spruce”.
C. Additional Submissions
Complainant reiterates its arguments in Complaint and argued that Respondent earns money from the disputed domain name website as an Amazon Associate and that Respondent’s website provides identical services to those of Complainant.
Complainant, About, Inc, runs THE SPRUCE, an online publication that offers information on a variety of topics, including home repairs and tools, decorating, gardening and entertainment. Complainant’s website was recorded to have been accessed over 40 million times each month. It is ranked at position 1,767 globally and at position 461 in the United States. Internet user are able to obtain information relating to home décor, gardening, home renovation, cleaning and more. Launched around the beginning of 2017, Complainant’s offering has grown additional branches under other marks, such as the The Spruce Eats via www.thespruceeats.com, registered on March 13, 2018, The Spruce Pets via www.thesprucepets.com, registered on February 14, 2018 and The Spruce Crafts via www.thesprucecrafts.com, registered on March 16, 2018. Complainant’s website lists several awards it was bestowed beginning in 2018 through 2020, and boasts a 20-year-strong library of more than 14,000 pieces of content and 45 expert writers.
Complainant owns the following trademark registrations of THE SPRUCE (in word and logo form) in the U.S.:
- U.S. Trademark Registration No. 5,414,304 for THE SPRUCE registered on February 27, 2018; and
- U.S. Trademark Registration No. 5,414,349 for [image of mark omitted] registered on February 27, 2018.
Prior to the proceeding, Complainant had sent a cease and desist letter to Respondent on March 18, 2021. However, Respondent never responded.
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.
Paragraph 4(a)(i) of the Policy requires Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
Complainant is the owner of the registered U.S. trademarks of “THE SPRUCE”.
Respondent asserts that “SPRUCE” is the name of a tree and a generic word. Respondent also asserts that there are numerous websites, trademarks and service marks of “SPRUCE” which were registered before Complainant’s “THE SPRUCE” trademark. Respondent argues that by reason of the foregoing, anyone can use the “SPRUCE” word and that there is no likelihood of confusion due to his website’s low visitor count.
The Panel disagrees with Respondent’s arguments. The legal test under UDRP Policy 4(a)(i) is whether the domain name itself is identical or confusingly similar to a trademark of service mark in which Complainant has rights. It is well established that the addition of merely descriptive terms would not prevent a finding of confusing similarity under the first element (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.). Past Panelists have found that such changes are not typically sufficient to distinguish a domain name from an incorporated mark. See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”). It is also established that an addition of a gTLD to a trademark is irrelevant in the analysis under Paragraph 4(a)(i) of the Policy.
In the present case, the Panel finds that there is confusing similarity between Complainant’s registered word trademark and Respondent’s disputed domain name as the latter wholly incorporates Complainant’s “THE SPRUCE” mark with the addition of a descriptive term “tools” and a gTLD “.com”.
In the present case, Complainant has demonstrated a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name through providing evidence of trademark registration before Respondent registered the disputed domain name.
Once Complainant establishes a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to show that it has rights or legitimate interests in respect of the disputed domain name. 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)); 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”); WIPO Overview 3.0, section 2.1.
In addition, Complainant also showed that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the THE SPRUCE mark in any way. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017).
Respondent argues that he was not aware of Complainant and its trademarks when he registered the disputed domain name in 2018. This, however, is insufficient to show that Respondent has rights or legitimate interests in the disputed domain name.
Having reviewed the evidence submitted by Complainant and Respondent, the Panel is not persuaded that the Respondent has rights or legitimate interests in the domain name. Respondent is neither known by the domain name nor is he authorized or licensed by Complainant to use the domain name.
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(a)(iii) of the Policy requires Complainant to show that Respondent registered and is using the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
Finding of registration and use in bad faith requires a showing that Respondent is taking an unfair advantage or otherwise abusing the complainant’s mark (WIPO Overview 3.0, 3.1). UDRP paragraph 4(b) provides non-exclusive scenarios that constitute evidence of a respondent’s bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
Complainant centers its arguments on UDRP paragraph 4(b)(iii) and (iv).
Complainant argues that its trademark registrations predate Respondent’s disputed domain name registration and therefore, Respondent was aware of and had full knowledge of Complainant and its trademarks. While Complainant’s trademarks registrations which predate registration of the disputed domain name by several months may be indicative that Respondent was aware of and had knowledge of Complainant and its trademarks, it is by no means a conclusive indication. It is up to Complainant to present evidence that would support such a holding. See Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015)
Complainant is essentially asking this Panel to presume Respondent registered the disputed domain name with full knowledge of Complainant’s registered mark and reputation targeting Complainant and intending to create a likelihood of confusion with Complainant’s mark. Applying constructive knowledge is the exception and not the norm, especially when Respondent clearly states that it had no knowledge of the Respondent or its rights. See Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trademark owner.”). When the disputed domain name was registered only several months after Complainant’s trademark it is incumbent upon Complainant to provide additional evidence showing that Respondent was exposed to Complainant and its offering under the mark, or other evidence indicating that Respondent was targeting Complainant, particularly when Respondent resides in a country where the evidence Complainant provided shows no meaningful traffic accessing its website, even some three years after it had registered its trademark and despite its apparent notoriety in the United States. See Compl. Ex. 5. In the absence of Complainant’s evidence supporting its argument that Respondent was indeed targeting Complainant and its marks, or other viable evidence showing that Respondent was exposed to Complainant’s marks, the Panel is not persuaded by Complainant’s argument that Respondent had full knowledge of Complainant and its trademarks at the time of registration and made the registration of the disputed domain name in bad faith.
Complainant also argues that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent’s websites attract Internet users who may reasonably but mistakenly believe is related to Complainant. Respondent argues that his website is a personal blogging site about power hand tools, which is completely different from Complainant’s website. Respondent also argues that he has no ulterior motive behind creating the website and he had never tried to sell the disputed domain name to Complainant nor is Complainant mentioned anywhere on his website. Respondent further argues that there is no way to divert Internet users because when users search for “THE SPRUCE”, his website will not appear on the top 100 search results on Google search engine. Having reviewed both parties’ arguments and evidence, the Panel is not persuaded by Complainant’s arguments that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. A simple comparison of both parties’ website show that the styles, formats and themes of each website are dissimilar. Complainant’s website features a bright and light-colored theme which discusses gardening while Respondent’s website features a dim and dark theme with the statement in large font size, “The Ultimate Power and Hand Tools Buying Guide” focusing on power tools. The Panel also notes that Complainant appears to be using THE SPRUCE mark with a green leaves logo on the left side of the words even though its U.S. trademark registration is of a mark comprising a greyish house with an open door on the left of the word mark. Nonetheless, Respondent’s mark which appears at the top of the website also comprises a different logo with different color schemes. In this regard, although both websites may feature content in related fields, the Panel is not persuaded that the evidence shows Respondent was in fact targeting Complainant when he registered the disputed domain name. Moreover, Respondent appears to have been using the disputed domain name to consistently post content relating to power and hand tools since 2018, constituting bona fide offering of services.
Complainant further argues that Respondent is earning off being an “Amazon Affiliate”. As far as this argument goes, it does not show that Respondent is profiting off Complainant’s name, trademark and/or brand nor has Complainant submitted evidence to support the same.
Having considered the totality of circumstances in this case, including all of the arguments and evidence put forward by the parties, 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). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith); see also Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad faith, without evidence, are insufficient for a complainant to establish 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 <thesprucetools.com> domain name REMAIN WITH Respondent.
Jonathan Agmon, Panelist
Dated: June 16, 2021
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