Aptive Environmental, LLC v. George Marshall / GRMarketing
Claim Number: FA2106001951173
Complainant is Aptive Environmental, LLC (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is George Marshall / GRMarketing (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aptivesolar.com>, registered with GoDaddy.com, 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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2021; the Forum received payment on June 15, 2021.
On June 16, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <aptivesolar.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 June 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@aptivesolar.com. Also on June 16, 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 June 25, 2021.
On June 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Beatrice Onica- Jarka 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.
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Respondent consents to transfer the <aptivesolar.com> domain name to Complainant. However, after the initiation of this proceeding, GoDaddy.com, LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. Although the Respondent has not contested the transfer of the disputed domain name and agrees to transfer the domain name in question to Complainant, the Panel finds that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel.
It is the opinion of this Panel that the “consent-to-transfer” approach is but one way for cyber squatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel decides that it would like to analyze the case under the elements of the UDRP.
A. Complainant
By the Complaint, the Complainant asserts that:
- It provides pest control services throughout the United States.
- It has rights in the APTIVE mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 6,122,868, registered Aug. 11, 2020; Reg. 6,122,869, registered Aug. 11, 2020). See Compl. Ex. B. Respondent’s <aptivesolar.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the word “solar”, along with the “.com” generic top-level domain (“gTLD”).
- The Respondent lacks rights and legitimate interests in the <aptivesolar.com> domain name.
- The Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its APTIVE mark in the disputed domain name.
- The Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead hosts parked pay-per-click links on the domain name’s resolving website.
- The Respondent registered and uses the <aptivesolar.com> domain name in bad faith. Respondent attracts users for commercial gain by hosting parked pay-per-click links on the domain name’s resolving website.
- The Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the APTIVE mark.
B. Respondent
The Respondent consents to the transfer of the <aptivesolar.com> domain name.
This Panel finds that the disputed domain name fully incorporates the mark in its entirety and adds the generic word “solar” along with the “.com” gTLD, while it was registered by the Respondent in the absence of any rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), in bad faith and used in bad faith for commercial gain under Policy ¶ 4(b)(iv).
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.
The Complainant claims rights in the APTIVE mark through its registrations with the USPTO (e.g. Reg. 6,122,868, registered Aug. 11, 2020; Reg. 6,122,869, registered Aug. 11, 2020). See Compl. Ex. B. Registration with the USPTO is generally considered evidence of rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <aptivesolar.com> domain name is identical or confusingly similar to Complainant’s APTIVE mark as it incorporates the mark in its entirety and adds the word “solar” along with the “.com” gTLD. Adding a generic word along with a “.com” gTLD is generally insufficient in differentiating a domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Gen. Elec. Co. v. Basalt Mgmt., D2000-0925 (WIPO Oct. 25, 2000) (finding the <generalelectricsex.com> domain name to be confusingly similar to the complainant’s GENERAL ELECTRIC mark).
The Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Therefore, the Panel finds the Respondent’s domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The 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), then the burden shifts to Respondent to show 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”).
Complainant argues that Respondent is not commonly known by the <aptivesolar.com> domain name, nor has Complainant authorized or licensed Respondent to use its APTIVE mark in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS information, among other evidence, may demonstrate that a Respondent is not commonly known by the disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS of record, along with the response, identifies Respondent as “George Marshall” of “GRMarketing”. See Registrar Verification Email; see also Response. Nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its APTIVE mark in the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <aptivesolar.com> domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Using a disputed domain name’s resolving website to host parked pay-per-click links is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Priceline.com LLC v. levesque, bruno, FA1506001625137 (Forum July 29, 2015) (“The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website unrelated to the mark does not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, which features pay-per-click links for various solar companies. See Compl. Ex. D.
The Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Therefore, the Panel finds the Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <aptivesolar.com> domain name in bad faith. Using a disputed domain name for no other purpose than hosting parked pay-per-click links is generally considered bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel considers the Complainant’s screenshots of the disputed domain name’s resolving website, which features parked pay-per-click links to various solar companies. See Compl. Ex. D. Therefore, the Panel finds Respondent registered and uses the disputed domain name for bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).
Complainant contends that Respondent registered the <aptivesolar.com> domain name with actual knowledge of Complainant’s rights in the APTIVE mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient to demonstrate bad faith, and may be stablished through incorporation of a well-known/registered mark into a disputed domain name. See G.D. Searle & Co. v. Pelham, FA 117911 (Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”).
The Panel considers that the disputed domain name incorporates Complainant’s registered APTIVE mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Therefore, the Panel finds Respondent had bad faith actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aptivesolar.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Beatrice Onica – Jarka, FCIArb - Panelist
Dated: July 13, 2021
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