Fredrick Lane Cantabery v. Contact Privacy / MyPrivacy.net Ltd.
Claim Number: FA1502001605776
Complainant is Fredrick Lane Cantabery (“Complainant”), Arkansas, USA. Respondent is Contact Privacy / MyPrivacy.net Ltd. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hipsway.com>, registered with easyDNS Technologies Inc..
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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 19, 2015; the Forum received payment on February 19, 2015.
On February 23, 2015, easyDNS Technologies Inc. confirmed by e-mail to the Forum that the <hipsway.com> domain name is registered with easyDNS Technologies Inc. and that Respondent is the current registrant of the name. easyDNS Technologies Inc. has verified that Respondent is bound by the easyDNS Technologies 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 February 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2015 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@hipsway.com. Also on February 24, 2015, 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 March 13, 2015.
A timely Additional Submission was received from Complainant on March 17, 2015.
On March 31, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed R. Glen Ayers 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 has registered the HIPSWAY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,292,070, registered Sept. 11, 2007, filed Jan. 25, 2006). Complainant also alleges that it holds unregistered common law rights in the HIPSWAY mark going back to 2005. The mark is used on or in connection with bags, “holdalls”, for sports clothing, purses, clutches, and related goods. The <hipsway.com> domain name is identical to the mark and differs only by the addition of the generic top-level domain (“gTLD”) “.com.”
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is neither commonly known as nor in possession of licensing rights that would allow Respondent to use the HIPSWAY mark in domain names.
While Respondent does own the disputed domain name (and has since 2002), Respondent has shown no demonstrable preparations to use, or made any actual use, of the disputed domain name.
Respondent has registered and is using the disputed domain name in bad faith. Complainant makes no Policy ¶ 4(b) arguments, but maintains bad faith registration and use.
B. Respondent
Respondent makes no contentions with regard to Policy ¶ 4(a)(i).
Respondent has rights or legitimate interests in the disputed domain name. Respondent hopes to use the domain name as a web application that allows Internet users to register as members and find information about the music they like and recommend music to others. Respondent notes that the website is currently in its development stage. Respondent also notes that the domain’s use corresponds with the domain name.
Respondent has not engaged in bad faith registration or use. Respondent argues that the registration date of the disputed domain name predates Complainant’s use of the HIPSWAY mark.
C. Additional Submissions
Complainant notes that Respondent has acknowledged that it has registered the disputed domain name in 2002 and has still failed to make any active use.
Respondent has offered numerous times to sell the disputed domain name to Complainant for the “lofty” amount of $10,000.
Complainant has registered the HIPSWAY mark with the USPTO (e.g., Reg. No. 3,292,070, registered Sept. 11, 2007, filed Jan. 25, 2006). The mark is used on or in connection with bags, “holdalls” for sports clothing, purses, clutches, and related goods.
Complainant also asserts unregistered common law rights in the HIPSWAY mark. While Complainant does not specifically address the issue, it must show that the mark has acquired secondary meaning in order to obtain common law trademark rights. Complainant’s only offered evidence on the matter is the assertion that it has been in business under the name “Hipsway” since 2005.
The Complainant has not met the evidentiary burden under UDRP Policy 4(a)(i).
However, the disputed domain name is identical to the mark, irrespective of the addition of “.com.” Thus, the Complainant has met its burden of showing the first element of the Policy, identical to or confusingly similar.
As to the issue of rights in the name, Complainant has shown and Respondent admits that Respondent has never made use of the domain name. Complainant, on the other hand, has used the mark in commerce, in a “brick and mortar retail operation” and online.
Complainant has met its burden under UDRP Policy 4(a)(ii).
As to bad faith, Complainant has shown that the mark has been in use, while the domain name has never been used. Complainant has shown that Respondent has attempted to sell the domain name to Complainant, on two occasions, for $10,000. Respondent disputes this issue but does not deny lack of use and the two attempts to sell.
Complainant has met its factual burden under UDRP Policy 4(a)(iii).
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.
Certainly, the mark and domain name are identical. The addition of “.com” is not relevant (and not asserted as a defense by Respondent). See, e.g., Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”).
Respondent made no contentions with regards to Policy ¶ 4(a)(i).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden shifted 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.”).
Respondent has only shown that it first registered the domain name. It is not commonly known by the name nor has it ever made commercial use of the name. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent has not used or made any demonstrable preparations to use the disputed domain name, leading to the conclusion that Respondent lacks rights or legitimate interests under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has made the unrebutted assertion that Respondent has attempted to sell the disputed domain name to Complainant for $10,000 on two different occasions. Such actions qualify as bad faith under Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Respondent’s offer to sell the disputed domain name to Complainant indicates bad faith pursuant to Policy ¶ 4(b)(i).
Respondent has never made any active use of the disputed domain name since its registration. While Complainant makes this argument in regards to Respondent’s rights and legitimate interests in the disputed domain name, the Panel considers the failure to make an active use of the disputed domain name supports a finding of bad faith per Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Consequently, Respondent’s behavior (or more accurately, behavior plus lack of behavior) indicates bad faith 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 <hipsway.com> domain name be TRANSFERRED from Respondent to Complainant.
R. Glen Ayers, Panelist
Dated: March 16, 2015
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