national arbitration forum

 

DECISION

 

GO Local NC Farms, LLC v. Paul Darcy

Claim Number: FA1201001426087

 

PARTIES

Complainant is GO Local NC Farms, LLC (“Complainant”), represented by Jimmy Davis, North Carolina, USA.  Respondent is Paul Darcy (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The disputed domain name is <golocalfarms.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2012; the National Arbitration Forum received payment on January 23, 2012.

 

On January 24, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <golocalfarms.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 January 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2012 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@golocalfarms.com.  Also on January 31, 2012, 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 February 21, 2012.

 

On February 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trade mark rights in the expression, GO LOCAL FARMS, and alleges that the disputed domain name is identical to the trade mark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

Respondent asserts a legitimate interest in the disputed domain name which it claims was registered for the purposes of promotion of a nonprofit business that would provide tracking services for local food sources.  Respondent claims that an injury prevented Respondent from developing its business and its website.

 

Additionally, Respondent contends that registration of the domain name predates Complainant’s trade mark rights. 

 

FINDINGS

The only factual matters relevant to the Decision are that:

 

1.         Complainant is the owner of the Federally registered trade mark GO LOCAL FARMS.

2.         The disputed domain name was registered on April 19, 2010.

3.         There has been no commercial or other relationship between the parties prior to this dispute and Complainant has not authorized Respondent to use its trade mark.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.

 

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights.  It is accepted that a trade mark registered with a national authority is prima facie evidence of trade mark rights for the purposes of the Policy^[1] and in this case Complainant provides evidence of its United States Patent and Trademark Office trade mark registration No. 3,989,612 for GO LOCAL FARMS, filed on November 27, 2010 and on registered July 5, 2011.

 

Panel is accordingly satisfied that Complainant has trade mark rights.   Panel is also satisfied that the disputed domain name, <golocalfarms.com>, is legally identical to Complainant’s GO LOCAL FARMS trade mark since it takes the trade mark and simply adds the wholly non-distinctive gTLD, “.com”, to the trade mark[2].

 

Complainant has accordingly satisfied the requirements of paragraph 4(a)(i) of the Policy.  Panel notes here that whilst Respondent argues that registration of the disputed domain name predates Complainant’s trade mark rights, the relevance of such matter if found to be supported by the facts bears on questions of legitimate rights and/or bad faith and not on paragraph 4(a)(i) of the Policy[3].

 

The Panel also follows the consensus opinion of former panels that the generic character of terms comprising or contained by the disputed domain name and/or trade mark under comparison is immaterial to the determination of paragraph 4(a)(i) of the Policy and should be considered, where appropriate, under paragraphs 4(a)(ii) or (iii)[4].   Whether that broad principle extents to registrations which are subject to disclaimers ( as in this instance where registration 3,989,612 carries a limitation of registration reading: “no claim is made to the exclusive right to use ‘local farms’ apart from the mark as shown”) has been debated by former panels but for reason which follow this Panel need not enter into that controversy.

 

Rights or Legitimate Interests

 

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[5]. 

 

The publicly available WHOIS information identifies Respondent as “Paul Darcy” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name.  There is no evidence that Respondent has any trade mark rights.  Complainant has not authorized Respondent to use the trade mark.

 

Respondent has not provided any evidence that it used the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute.  Complainant claims that, up until notification of the dispute, the domain name resolved to a website parked with the Registrar, GoDaddy.com., after which Complainant asserts that the domain name resolved to an inactive website that states, “Sorry! This site is not currently available.”

 

The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.

 

For its part, Respondent alleges that it is a longtime advocate for small farms and farmers and that, in April 2010, Respondent decided to create a non-profit business with the goal of assisting the public in tracking their local food sources.  Respondent claims that it registered the disputed domain name on April 19, 2010 for the purpose of that business but asserts that it was at the time recovering from an injury and was not able to create a working website.  Respondent contends that it now receives permanent disability and has the financial security to begin creating its business and website. 

 

Panel is not persuaded that these claims are of assistance to Respondent, even had Respondent provided evidence of their veracity.  Paragraph 4(c) has not been satisfied.  There has been no actual use of the disputed domain name in connection with a bona fide offering of goods or services.  There is no evidence of any substance of demonstrable preparations to use the disputed domain name, nor is there any indication that Respondent might have been commonly known by the domain name.  Finally, there are no other signs that Respondent has rights or a legitimate interest in the disputed domain name other than its statements about the relative timing of the registration vis-à-vis the trade mark, a matter which the Panel determines to be better analyzed under the final element (bad faith) of the Policy. 

 

Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and therefore Complainant has satisfied the second element of the Policy.

 

Registration and Use in Bad Faith

 

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being 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.’

 

Panel determines that there is nothing whatsoever in the Complaint to support any one of paragraph 4(b)(ii), (iii) or (iv) of the Policy.

 

So far as paragraph 4(b)(i) of the Policy is concerned, Complainant advances evidence that it offered to purchase the disputed domain name for $150.00, being more than the appraised value of $80.00 for the disputed domain name.  Complainant alleges that Respondent counteroffered, requesting a “4 figure” offer.

 

Those facts must support a finding that it was more likely than not that Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or one of its competitors for a value in excess of the Respondent’s out-of-pocket registration costs.

 

Panel finds, firstly, that the valuation of the disputed domain name put forward by Complainant in its evidence is an irrelevant piece of information.  Nonetheless, it can safely be assumed that both the amount offered by Complainant and the acceptable range suggested by Respondent both far exceed the Respondent’s out-of-pocket registration costs.  However, that is not the end of the matter.  Panel finds, secondly, that there is no clear evidence that Respondent was aware of Complainant’s identity either at the time of Complainant’s offer or at the time of its counteroffer.  In particular, there is no evidence of Complainant’s possible reputation such that an adverse inference might be drawn against Respondent’s actions.  Additionally, Panel observes that the offer to purchase the disputed domain name was made through the Registrar for the disputed domain name, GoDaddy.com, Inc., acting on instructions from and as agent for Complainant.  This is no evidence before the Panel that GoDaddy.com, Inc. revealed to Respondent the identity of the prospective purchaser.   

 

Panel has made allowance for the possibility that between offer and counteroffer, Respondent was astute to ascertain the likely identity of the prospective purchaser, but notes from the evidence that Complainant’s website address is not located intuitively.  Even assuming Respondent did uncover the likely identity of Complainant prior to its counteroffer, the counteroffer speaks naught for Respondent’s state of mind at the time it registered the disputed domain name and no reliable conclusion could be drawn that Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or one of its competitors.

 

Finally, Panel takes cognizance of the fact that paragraph 4(b) of the Policy allows for other proof of registration and use in bad faith, aside from the four scenarios set out above. 

 

In this case, Complainant would need to show registration in bad faith on April 19, 2010.  That registration date predates the filing date of Complainant’s trade mark registration.  Nonetheless, Panel observes that Complainant’s trade mark registration lists April 12, 2010 as the first use date in commerce of Complainant’s mark.   There is no longer any respectable argument under the Policy that Respondent is saddled with constructive knowledge of Complainant’s first use in commerce; a finding of bad faith hinges squarely on the probability that it was more likely than not that Respondent knew of, and targeted, Complainant’s trade mark.

 

In this case, such a finding can not be supported by the evidence.  Complainant alleges that its trade mark rights date back to 2009.  In aid of that claim, Complainant presents the Panel with a screenshot of its website, found at <golocalncfarms.com>, in order to demonstrate Complainant’s use of the GO LOCAL FARMS mark.  Complainant also provides the Panel with an e-mail dated April 20, 2010, as evidence that Complainant conducted business under its trade mark at that time.

 

Neither piece of evidence is compelling.  The website screenshot does not reflect the position in April 2010.  Moreover, the one occurrence of the Complainant’s trade mark on the screen-shot does not show the trade mark as it is registered but instead with the word “GO” together with a sun device prominently featured, underneath which are the smaller, plain letter words, “local farms”.   Panel is far from satisfied that anyone seeing that webpage, were it visible in that form on April 19, 2010, would identity GO LOCAL FARMS as a trade mark.

 

The e-mail dated April 20, 2010 is of no weight since there is no indication at all it is directed to Complainant.

 

In any event, neither piece of evidence suggests even localized public awareness of Complainant’s trade mark such that a reasonable person might conclude that Respondent targeted it.  Coupled with these observations is the apparent fact that the parties are distantly separated in the United States.  Taking final account of the overtly descriptive character of the words “go” and “local farms”, the Panel finds that the Complainant has failed to meet the burden of proof of bad faith registration and use under paragraph 4(a)(iii) of the Policy

 

DECISION

Having failed to establish at least one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <golocalfarms.com> domain name REMAIN WITH Respondent.

 

 

Debrett Gordon Lyons, Panelist

Dated:  March 13, 2012