Cloudcover IP, LLC v. Richard Simpson / CloudCover USA LLC
Claim Number: FA2202001985811
Complainant is Cloudcover IP, LLC (“Complainant”), represented by Michael A. Bondi of Moss & Barnett, P.A., Minnesota, USA. Respondent is Richard Simpson / CloudCover USA LLC (“Respondent”), New York, USA.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <ccover.co> and <cloudcoversolutions.com>, registered with Key-Systems GmbH and Google 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2022; the Forum received payment on February 24, 2022.
On February 25, 2022 and March 1, 2022, Key-Systems GmbH and Google LLC, respectively, confirmed by e-mail to the Forum that the <ccover.co> and <cloudcoversolutions.com> domain names are respectively registered with Key-Systems GmbH and Google LLC and that Respondent is the current registrant of the names. The Registrars verified that Respondent is bound by their registration agreements 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 March 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2022 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@ccover.co and postmaster@cloudcoversolutions.com. Also on March 3, 2022, 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.
On March 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 domain names be transferred from Respondent to Complainant.
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The domain name holders are not the same but it is Complainant’s contention that there is only one controlling mind. Whilst Complainant provides a compelling argument for that assertion the question does not require further attention since, for reason which follow shortly, the Complainant fails on the first element of the Policy in respect of one of the domain names and so the question of common ownership ceases to be of relevance.
A. Complainant
Complainant asserts trademark rights in CLOUDCOVER. Complainant holds a national registration for that trademark. Complainant submits that the domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides digital risk management services by reference to the trademark CLOUDCOVER;
2. the trademark is the subject of United States Patent & Trademark Office (“USPTO”) Reg. No. 4,045,622, registered on October 25, 2011;
3. the <ccover.co> domain name was registered on April 27, 2020, and the <cloudcoversolutions.com> domain name was registered on July 15, 2021;
4. the <cloudcoversolutions.com> domain name has resolved to a website offering services related to those provided by Complainant under the trademark; and
5. the <ccover.co> domain name redirects internet users to the <cloudcoversolutions.com> domain name and its site.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights in CLOUDCOVER since it provides proof of its registration of that trademark with the USPTO, a national trademark authority.
The Complainant submits that “[a] simple textual comparison reveals that Respondent’s domains are identical or confusingly similar to Complainant’s trademark.” Further, that the “domain ccover.co is a clear contraction of Complainant’s CLOUDCOVER mark plus the country code top-level domain (‘ccTLD’) ‘.co’.”
For the purposes of comparison of the domain name with the trademark, the ccTLD can be disregarded (see, for example, CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) holding that “[t]he inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). However, the Panel does not find that “ccover” is an obvious contraction of “cloudcover”, still less find that a textual comparison reveal the terms to be confusingly similar. Finally, it is plain that they are not identical.
There is no evidence that Complainant uses the letter “c” in place of the full word “cloud”; indeed, the Complaint lists the many domain names registered to Complainant which, without exception, use the full word “cloud” in combination with other words.
Finally, there is an uncompelling submission that the terms are confusingly similar because the <ccover.co> domain name redirects internet users to the <cloudcoversolutions.com> domain name and its site.
The Panel finds that the <ccover.co> domain name is neither identical nor confusingly similar to the trademark and for that reason the Complaint fails in respect of that domain name (see, for example, 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; 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)).
On the other hand, the Panel finds that the <cloudcoversolutions.com> domain name is confusingly similar to the trademark since it merely adds a descriptive term and gTLD to the trademark (see, for example, MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”)).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy with respect to the <cloudcoversolutions.com> domain name. The remainder of this Discussion which follows is confined to consideration of that domain name only.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The Registrar confirmed that the domain name registrant is “Richard Simpson” and that the registrant organization is “CloudCover USA LLC”. The evidence accompanying the Complaint shows that Richard Simpson is or was associated with a company doing business in the United States since 2020 which describes itself as “part of the Management, Scientific, and Technical Consulting Services Industry.” The website resolving from the disputed domain name is well developed and states that the focus of the business “is to execute process-driven technology solutions for unique security challenges through concept development, systems integration, and advisory services, supporting decision-makers with solutions to the most complex security requirements.” The company has six employees and a not insignificant turnover. The evidence does not show it to have any registered trademarks of its own. Complainant states that there is no association between the Parties and there is nothing which might contradict that claim.
In terms of paragraph 4(a)(ii) of the Policy, the weight of the evidence provided by Complainant itself suggests to the Panel that the expression “cloudcover” had been used by Respondent (as an individual, business, or other organization) in connection with an offering of services of the kind described above. The questions which arise are (i) whether that use was bona fide, and (ii), whether Respondent was commonly known by the domain name.
The second question is easier to answer since UDRP panelists examining paragraph 4(c)(ii) of the Policy have, in the main, insisted on direct correspondence between the domain name and the name by which a respondent was allegedly known. Here, there is no evidence that Respondent was known by the name, “CloudCover Solutions”.
With regard to the former question there is ample authority in UDRP decisions for the proposition that a domain name, the use of which would infringe a complainant’s registered trademark, is not considered bona fide, or at least not likely to give rise to a right or legitimate interest in the disputed domain name. However, the situation is less clear-cut where the domain name consists of descriptive or otherwise diluted terms. The word “solutions” is generic and does not alter the analysis. The term, “cloudcover”, is used not only by the Parties but seemingly by several other US businesses. That said, it is only Complainant who holds a USPTO registration for the term as a trademark and it is not obvious to the Panel that the trademark has any commonly understood meaning in the IT security industry. The term may allude to the services provided by Complainant but that is the character of many successful trademarks.
On balance, the Panel does not find that Respondent has a bona fide interest in the disputed domain name as it consists primarily of a distinctive term already registered with the USPTO from a time well before the establishment of Respondent’s business.
The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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) the 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 respondent’s 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 site or location.’
The Panel finds that the matter falls under paragraph 4(b)(iv). It has already found the disputed domain name to be confusingly similar to Complainant’s trademark. The resolving website describes Respondent’s business which obviously exists for commercial gain. The only live issue might be Respondent’s intention in using the domain name, but it is generally agreed that the required intent is satisfied if the outcome of the use is a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the resolving website.
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy with respect to the <cloudcoversolutions.com> domain name, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <cloudcoversolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Having failed to establish one of the elements required under the ICANN Policy with respect to the <ccover.co> domain name, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <ccover.co> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: April 5, 2022
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