Red Reactive, LLC v. Brian Probst / Desenia
Claim Number: FA2208002006864
Complainant is Red Reactive, LLC (“Complainant”), Utah, USA. Respondent is Brian Probst / Desenia (“Respondent”), represented by Mark H. Richards, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <redreactive.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.
dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2022; the Forum received payment on August 3, 2022.
On August 3, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <redreactive.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 August 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@redreactive.com. Also on August 9, 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.
A timely Response was received and determined to be complete on August 29, 2022.
On September 06, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed dr. Katalin Szamosi 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
Complainant asserts that it offers light-based skin treatment.
Complainant argues that Complainant has rights in the RED REACTIVE mark based upon its application for registration of the mark with the USPTO (e.g., Ser. No. 97,298,625 filed March 7 2022).
Complainant also asserts common law rights in the RED REACTIVE mark. Complainant argues that the <redreactive.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the RED REACTIVE mark in its entirety and adds the “.com” generic top-level domain (“gTLD”).
Complainant argues that Respondent was engaged as a contractor by a sister company of Complainant.
Complainant asserts that there were discussions of Respondent becoming an equity owner of Complainant, however this did not occur, and even if it had occurred, Respondent nevertheless would not have had any direct ownership rights in the company’s assets.
Respondent was involved in purchase of the Domain as a direct part of his contractor duties.
Respondent has no legitimate interests in the <redreactive.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the RED REACTIVE mark.
Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a competing website.
Respondent registered and uses the <redreactive.com> domain name in bad faith. Respondent registered the disputed domain name in order to divert customers for commercial gain. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the RED REACTIVE mark.
B. Respondent
Respondent argues that Complainant lacks rights in the RED REACTIVE mark because Complainant does not own the RED REACTIVE mark and Respondent has thus not infringed upon it.
Respondent asserts that, he has documentation stating legal ownership in the Complainant which he intends to legally enforce.
Respondent argues that Respondent has rights and legitimate interests in the disputed domain name.
Respondent argues that Respondent is using the disputed domain name for a bona fide offering of goods or services, given Respondent’s history and prominence within the field of electronic light therapy.
Respondent argues that Respondent has not registered or used the disputed domain name in bad faith. Respondent has not attempted to mislead internet users as to the affiliation of the disputed domain name.
PRELIMINARY ISSUE: NON-UDRP LEGAL ARGUMENTS
Complainant argues various legal points pursuant to United States law as they may apply to the doctrine of fair use and Complainant’s rights in the mark. The Panel highlights that the instant dispute is governed by the UDRP and not United States law. Panel finds that these arguments are not applicable to this arbitration proceeding within the scope of the UDRP and its elements. See Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
Accordingly, the following analysis is strictly confined to an analysis under the UDRP and does not address any arguments made by either party with respect to United States law.
PRELIMINARY ISSUE: BUSINESS/CONTRACTUAL DISPUTE OUTSIDE THE SCOPE OF THE UDRP
Both parties allege to have rights relating to the disputed domain name. Complainant argues to have used the RED REACTIVE mark although it has not filed sufficient evidence to prove it. Respondent claims he designed the logo of the RED REACTIVE mark.
Both parties agree on the fact that they were involved together in a business relation in the past, even though it is not clear what the extent of the relationship was. The disputed domain name was originally purchased by Respondent in conjunction with Respondent’s work for Complainant, but is registered in Respondent’s own name. After the business relationship between Respondent and Complainant was terminated, Respondent refused to transfer the domain name to the Complainant. Complainant and Respondent have no further business relationship.
Respondent argues that Respondent possesses and intends to enforce a legitimate ownership interest in Complainant, and was not merely a contractor. Respondent purchased the disputed domain name of Respondent’s own volition, not at the direction of Complainant, prior to the registration of Complainant by Complainant’s principal. Respondent contends that the present proceedings are part of an ongoing legal dispute between Complainant and Respondent.
Usually a business and/or contractual dispute between two parties fall outside the scope of the UDRP. However, the Panel finds that the dispute between the parties relates to the ownership of equity in the Complainant, therefore the question of contractual interpretation can be disregarded.
Accordingly, the following analysis is strictly confined to an analysis under the UDRP and does not address any arguments made by either party with respect to their contractual relationship or ownership of equity.
The Panel finds that Complainant has failed to establish that it has a registered trademark, or that it is the owner of a mark in which it has acquired secondary meaning sufficient to meet its burden of proof under UDRP Policy ¶ 4(a)(i). Since Complainant has failed to meet its burden to establish the first element of the Policy, the Panel need not analyze the other two elements of the Policy, and the relief requested by the Complainant is denied.
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.
Respondent argues that Complainant does not have rights in the RED REACTIVE mark because Complainant’s trademark application with the USPTO does not sufficiently confer rights in the mark per Policy ¶ 4(a)(i) and Complainant has not adequately asserted common law rights in the mark. See Imagine Nation Books Ltd. v. LEE, LAWRENCE, FA 1662128 (Forum Mar. 31, 2016) (“Complainant’s only assertion of rights in the mark stem from a trademark application and the statement that Complainant offers ‘services and goods under the name Collective Goods’… [and] pending trademark applications do not establish rights in a mark under Policy ¶ 4(a)(i).”); see also Thomas Alarm Sys., Inc. v. cHEXx Partners, FA 1303478 (Forum Mar. 12, 2010) (finding the complainant had failed to prove secondary meaning when its “sole allusion to common law ownership of that trademark is its provision to the panel of articles of incorporation indicating that Complainant has been in business since 1984”).
Respondent argues that Complainant presently does not own the RED REACTIVE mark, and disputes Complainant’s assertions of common law rights in the mark. Respondent contends that Complainant did not register under the RED REACTIVE mark until January 2020, and alleges that Complainant was not known as RED REACTIVE until after Respondent had already personally purchased the disputed domain name.
The Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to sufficiently establish rights that rise to the level of secondary meaning identified with Complainant in the RED REACTIVE mark during the relevant time period. The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(i). Thus, the Panel declines to analyze the other two elements of the Policy. See 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); see also 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)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED without prejudice.
Accordingly, it is Ordered that the <redreactive.com> domain name REMAIN WITH Respondent.
dr. Katalin Szamosi, Panelist
Dated: September 19, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page