David Unangst v. Aimee Rancer
Claim Number: FA1307001508778
Complainant is David Unangst (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is Aimee Rancer (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thelocaltransplant.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2013; the National Arbitration Forum received payment on July 9, 2013.
On July 16, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <thelocaltransplant.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 July 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2013 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@thelocaltransplant.com. Also on July 19, 2013, 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 7, 2013.
On August 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 registered and is using the LOCAL TRANSPLANTS mark to provide online forums and social networking media to Internet users. Complainant holds United States Patent and Trademark Office ("USPTO") registration for the LOCAL TRANSPLANTS mark (Reg. No. 3,773,145 registered April 6, 2010).
Complainant argues that the Respondent merely adds the term “the” to the mark in forming the disputed domain name.
Respondent is known as “Aimee Rancer.”
Respondent confuses Internet users by sending them to a competing service.
Respondent registered the domain name to disrupt Complainant’s business.
Respondent seeks to confuse Internet users into believing that its website is associated with Complainant.
Respondent’s registration of the <thelocaltransplant.com> domain name evidences an attempt to capitalize on Internet user’s initial interest confusion. Even if the websites that resolve from the domain name are not related to Complainant’s business, initial interest confusion should apply.
Respondent’s speech is not communicative as to the use of the LOCAL TRANSPLANT mark in the domain name; the message of the speech need to incorporate the mark in some manner, not merely use the mark to identify unrelated speech.
Respondent had constructive, if not actual, knowledge of Complainant’s rights before registering the domain name. Complainant used the mark to promote dog daycare services as far back as 2004.
B. Respondent
Respondent alleges that Complainant’s mark is not unique, and that the introduction of the term “the” sufficiently negates confusion between Complainant’s mark and the disputed domain name.
Respondent registered the disputed domain name on February 6, 2013, for purposes of hosting a website for her “personal brand” and to “showcase her individual style.” The disputed domain name refers to the fact that the Respondent is a “transplant” from Ohio exploring the West Coast of the United States. Respondent does not make any money through this domain name; it is merely a personal blog.
Respondent alleges that there is no possibility that Internet users would confuse Complainant’s unrelated business with Respondent’s own personal blog about life in San Francisco, California.
Respondent alleges she is protected by free speech assurances, as the message she makes through the disputed domain name is non-commercial and communicative speech.
Complainant registered and is using the LOCAL TRANSPLANTS mark to provide online forums and social networking media to Internet users. Complainant holds USPTO registration for the LOCAL TRANSPLANTS mark (Reg. No. 3,773,145 registered April 6, 2010).
Respondent registered the disputed domain name <thelocaltransplant.com> domain name on February 6, 2013.
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.
Complainant registered and is using the LOCAL TRANSPLANTS mark to provide online forums and social networking media to Internet users. Complainant states that it holds USPTO registration for the LOCAL TRANSPLANTS mark (Reg. No. 3,773,145 registered on April 6, 2010). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) by its showing of rights in the mark through the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that Respondent merely adds the term “the” to the mark in forming the disputed domain name. The Panel notes that the disputed domain name removes the spacing in the mark, adds the generic top-level domain (“gTLD”) “.com,” and the term “the” to the mark in forming the domain name. The Panel agrees that neither spacing nor the gTLD are relevant, and thus concludes that the disputed domain name is confusingly similar to Complainant’s LOCAL TRANSPLANTS mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
The Panel notes that the Complainant does not make any specific contentions that Respondent is not commonly known by the <thelocaltransplant.com> domain name.
Complainant generally asserts that Respondent confuses Internet users by sending them to a competing service. However, the Panel notes that all evidence of the disputed domain name indicates that Respondent is using it to provide information about herself and her personal experiences in a personal blog.
Respondent notes that she registered the disputed domain name on February 6, 2013, for purposes of hosting a website for her “personal brand and” to “showcase her individual style.” Respondent points out that the domain name’s website explicitly refers to the fact that she is a “transplant” from Ohio exploring the West Coast of the United States. See Respondent’s Ex. 2. Respondent notes that she does not make any money through this domain name, and that it is merely a personal blog narrating her experiences in San Francisco and the West Coast of the United States following her graduation from college. The Panel agrees that Respondent’s use of the domain name to host a blog of her personal experiences, in the absence of any signs of commercial gain or hyperlinks, constitutes a valid Policy ¶ 4(c)(iii) legitimate noncommercial and fair use of this domain name. See, e.g., RMO, Inc. v. Burbidge, FA 96949 (Nat. Arb. Forum May 16, 2001) (“A family information site is a legitimate non-commercial use.”); see also Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that the respondent has rights in the <missionsuccess.net> domain name where she was using the domain name in connection with a noncommercial purpose).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Considering that this Panel has found that Respondent has rights or legitimate interests in the <thelocaltransplant.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not registered or used the disputed domain name in bad faith, as Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Complainant argues that Respondent registered the domain name to disrupt Complainant’s business. The Panel notes that there is no evidence in either Complainant’s or Respondent’s annexes to support a finding of competition between the Parties related to the content on the website under the <thelocaltransplant.com> domain name. See Complainant’s Ex. 10 and Respondent’s Ex. 2. The Panel agrees that in the absence of any affirmative evidence, there is no basis for finding Policy ¶ 4(b)(iii) bad faith. See UDRP Policy ¶ 4(b)(iii) (stating “you have registered the domain name primarily for the purpose of disrupting the business of a competitor.”) (emphasis added).
Respondent argues that there is no possibility that Internet users would confuse Complainant’s unrelated business with Respondent’s own personal blog about life in San Francisco, California. The Panel agrees that as Respondent registered this domain name to tell her own personal stories on a blog, there is no bad faith registration under Policy ¶ 4(a)(iii). See Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (As a general proposition, “the same facts establishing fair use and the exercise of free speech negate a finding of bad faith intent”); Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that because “Respondent neither offered the Domain Name for sale, nor wanted it to disrupt Complainant’s business, [nor] prevent Complainant from reflecting the mark in its domain,” it did not register or use the domain name <metagen.com> in bad faith).
Respondent argues that it did not have actual knowledge of Complainant’s rights in the mark, it merely registered the domain name based on the fact that she wanted to tell a blog-style narrative of herself as “transplant” who moved from Ohio to live on her own on the West Coast of the United States. The Panel finds that Respondent did not register or use the <thelocaltransplant.com> domain name with actual knowledge of Complainant’s rights in the mark, based on the common terms of which the domain name consists, and thus concludes that Respondent did not register and use the domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
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 <thelocaltransplant.com> domain name REMAINS WITH Respondent.
Luiz Edgard Montaury Pimenta, Panelist
Dated: August 28, 2013
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