Daredevil Brewing Company LLC v. Matthew O'Brien
Claim Number: FA1503001608504
Complainant is Daredevil Brewing Company LLC (“Complainant”), represented by Alastair J. Warr, Indiana, USA. Respondent is Matthew O'Brien (“Respondent”), Alberta, CA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <daredevilbrewing.com>, registered with GoDaddy.com, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2015; the Forum received payment on March 6, 2015.
On March 9, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <daredevilbrewing.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 March 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 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@daredevilbrewing.com. Also on March 12, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 name be transferred from Respondent to Complainant.
A. Complainant
(i) Complainant uses the DAREDEVIL BREWING CO mark in connection with its business with regards to beer, ale, lager, stout, porter, and shandy. Complainant has registered the DAREDEVIL BREWING CO mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,375,264, filed November 12, 2012, registered July 30, 2013), which demonstrates its rights in the mark. Respondent’s <daredevilbrewing.com> domain name is confusingly similar because it incorporates a significant portion of the mark (“DAREDEVIL BREWING”) and adds the gTLD “.com.”
(ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, and has had no authorization from Complainant to register and use the <daredevilbrewing.com> domain name or any variation of the DAREDEVIL BREWING CO mark. Further, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <daredevilbrewing.com> domain name. Rather, the Respondent has inactively held the disputed domain name.
(iii) Respondent has registered the <daredevilbrewing.com> domain name in bad faith. Respondent is attempting to disrupt Complainant’s business by preventing Complainant from registering the domain name. Further, Respondent is attracting, for commercial gain, internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its website and Respondent’s purported beer products and brewing services which compete with Complainant’s business.
B. Respondent
Respondent did not submit a response. The Panel notes that the <daredevilbrewing.com> domain name was registered on January 12, 2007.
C. Additional Submissions
Pursuant to the Panel’s Procedural Order dated April 9, 2015, both Complainant and Respondent filed Additional Submissions on April 16 and April 17, 2015 respectively.
(i) Complainant’s Additional Submission
Respondent is in the business of developing strategies to develop artificial value for domain names and selling them for profit. Respondent owns no fewer than Two Hundred Eighty Three (283) domains which show Respondent has developed a routine practice of registering domains in bad faith with the intent to make them attractive to potential purchasers and to sell them for artificially elevated prices. The most recent date of renewal of the Domain Name is more appropriate to consider than the registration date. Complainant’s rights in the United States trademark registrations for DAREDEVIL BREWING CO (and Design) (Reg. No. 4,375,264), DAREDEVIL BREWING CO (reg. No. 4,375,264), DAREDEVIL (Reg. No. 4,283,789) date back to a time prior to the date of the domain name renewal. Any defense or decision based on solely on the date of disputed domain name is inappropriate.
Some evidence of bad faith does not require strict priority of a Complainant’s trademark registrations to Respondent’s registration of the disputed domain name, such as when Respondent has not made an active use of the domain name, has renewed the domain name under circumstances of bad faith, or has registered the domain name after Complainant’s ancillary trademark rights. An offer to sell a domain name is not a prerequisite for proving intent to sell.
Respondent’s longstanding non-use of the disputed domain name and other indicia of bad faith render immaterial any priority in time of the disputed domain name registration. Complainant’s rights under the Complainant’s registered trademarks and the related family of trademark rights date back to a time prior to the date the disputed domain name was registered. Complaint began developing its trademark rights under the Daredevil name, Complainant purchased the trademark rights of Dal Broi Family Wines PTY TD, an Australian corporation, in DAREDEVIL CROSSING (U.S. Reg. No. 3,199,118; International Reg. No. 882207). DAREDEVIL CROSSING was registered in the U.S. on January 16, 2007. This sale, executed on February 2, 2012, transferred to Complainant all interests and the associated goodwill to the acquired mark which has a priority date coinciding with the date of priority and protections granted by the Australian Trademark Office of January 5, 2006. Complainant assumed and incorporated the rights associated with the acquired mark into its business and later the same year sought registrations for derivations of the acquired mark by applying for the Complainant’s registered marks as a continuation of such acquired rights. When considering the totality of the evidence regarding the family of trademark rights surrounding the registered marks, including the acquired mark, the relevant date of priority of Complainant’s trademark rights is at least January 5, 2006. It is inappropriate to render a decision on the grounds of priority.
(ii) Respondent’s Additional Submission
Respondent did not have and does not have any intentions of registering the disputed domain name in bad faith. The relevant website is used in conjunction with Respondent’s home brewing hobby. Respondent is not profiting off of it whatsoever.
(iii) Complainant’s second Additional Submission
On April 21, 2015, Complainant filed second Additional Submission where Complainant asserts to the effect that in case Respondent does not file a response to the Amended Complaint, the allegations stated therein are deemed admitted for the purpose of the proceeding, and where a Respondent does not address an issue or provide an explanation in response to the Complainant’s allegations, “Respondent admits by its silence to Complainant’s claims.
(iv) Respondent’s second Additional Submission
On April 22, 2015, Respondent filed second Additional Submission where Respondent contends that i) he did not register the disputed domain name in bad faith and he is not hording more than 200 domain names to sell them for a profit, ii) he does not have a blog or have ever written anything pertaining to such a practice, iii) the owners of some of these domain names are registered to a " Matthew O'Brien" but they are not Respondent; for example, the owners of the domain names being all different people according to the information obtained through webnames.ca, and iv) the disputed domain name is used in conjunction with Respondent’s home brewing hobby.
Complainant established that it had rights in the marks contained in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s DAREDEVIL BREWING CO mark.
Respondent did not register the disputed domain name in bad faith.
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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the DAREDEVIL BREWING CO mark in connection with its business with regards to beer, ale, lager, stout, porter, and shandy. Complainant claims to have registered the DAREDEVIL BREWING CO mark with the USPTO (e.g., Reg. No. 4,375,264, filed November 12, 2012, registered July 30, 2013). See Compl., at Attached Ex. A-1. This Panel determines that such registrations confer rights in the mark dating back to November 12, 2012, the date on which Complainant first filed for trademark protection with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)) ; see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Respondent’s <daredevilbrewing.com> domain name is confusingly similar because it incorporates a significant portion of the DAREDEVIL BREWING CO mark, eliminates the spacing between words and the “CO” abbreviation, and adds the gTLD “.com.” Panels have seen where a disputed domain name differs from a complainant’s mark by only one or two words, a finding of confusing similarity pursuant to Policy ¶ 4(a)(i) follows. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). Further, the elimination of spacing between words and the addition of gTLD “.com” has been seen as irrelevant by past panels in analyzing the confusingly similar nature of a disputed domain name to a mark per Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, this Panel agrees that Respondent’s <daredevilbrewing.com> domain name is confusingly similar to the DAREDEVIL BREWING CO mark under Policy ¶ 4(a)(i).
As the Panel finds Complainant failed to satisfy Policy ¶ 4(a)(iii) (Registration and Use in Bad Faith), the Panel declines to analyze Policy ¶ 4(a)(ii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (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).
The Panel notes that Respondent’s January 12, 2007 registration of the disputed domain name predates Complainant’s earliest USPTO filing.
Complainant makes no contentions with regards to its recognition by consumers and/or media outlets which might predate Respondent’s January 12, 2007 registration of the disputed domain name. Pursuant to the Panel’s Procedural Order requesting Complainant to establish that the Complainant’s registered or common law rights for the mark “DAREDEVIL” or “DAREDEVEIL BREWING” predate the registration of the disputed domain name, Complainant filed the Additional Submission where Complainant asserts as follows:
Firstly, the most recent date of renewal of the Domain Name is more appropriate to consider than the registration date. Complainant’s rights in the United States trademark registrations for DAREDEVIL BREWING CO (and Design) (Reg. No. 4,375,264), DAREDEVIL BREWING CO (reg. No. 4,375,264), DAREDEVIL (Reg. No. 4,283,789) date back to a time prior to the date of the domain name renewal. Secondly, some evidence of bad faith does not require strict priority of a Complainant’s trademark registrations to Respondent’s registration of the disputed domain name, such as when Respondent has not made an active use of the domain name, has renewed the domain name under circumstances of bad faith, or has registered the domain name after Complainant’s ancillary trademark rights.
The Panel observes a general view of the UDRP panels that although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. See John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, D2001-0074 (WIPO, May 1, 2001) and Digital Vision, Ltd. v. Advanced Chemill Systems, D2001-0827 (WIPO, Sep.23, 2001).
In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. See Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), D2003-0320 (WIPO, July 4, 2003) and Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, D2003-0598 (WIPO, October 8, 2003).
The Panel finds that none of the circumstances which Complainant has demonstrated in its amended Complaint and in the Additional Submissions as summarized above is sufficient to infer that Respondent targeted Complainant's marks at the time of the registration of the disputed domain name or to recognize the Respondent’s bad faith registration.
The Panel cannot accept the Complainant’s allegations that Respondent registered and used the disputed domain name in bad faith simply because Respondent is in the business of developing strategies to develop artificial value for domain names and selling them for profit. It is not bad faith to offer a domain name for sale where the domain name is registered for its inherent value not for the purpose of targeting a trademark. See LML Investments LLC v. P.A. Gordon, FA 1571756 (Nat. Arb. Forum Sept., 2014) ( “[S]ince the Panel finds that Respondent has rights in the domain name at issue which far predate and are superior in some respects to those of Complainant, it is clear that Respondent is legally free to offer the domain for sale at any price it wishes.”); see also Instrumentation Northwest, Inc. v. INW.COM c/o Telepathy, Inc., D2012-0454 (June 1, 2012)(noting a party is free to sell a domain name for a profit where the domain name is registered because of its inherent value as a three-letter domain or a common word). There is no evidence Respondent targeted Complainant’s marks with respect to registration of the disputed domain name.
The Panel cannot accept Complainant’s allegations either that Respondent’s longstanding non-use of the disputed domain name and other indicia of bad faith render immaterial any priority in time of the disputed domain name registration because the sole circumstance of longstanding non-use of the disputed domain name cannot justify the inference of Respondent’s bad faith registration unless it is coupled with other circumstances, e.g., the fame of the Complainant’s relevant marks.
Complainant further contends that Complainant’s rights under the Complainant’s registered trademarks and the related family of trademark rights date back to a time prior to the date the disputed domain name was registered. It continues to assert that Complaint began developing its trademark rights under the Daredevil name, Complainant purchased the trademark rights of Dal Broi Family Wines PTY TD, an Australian corporation, in DAREDEVIL CROSSING (U.S. Reg. No. 3,199,118; International Reg. No. 882207). DAREDEVIL CROSSING was registered in the U.S. on January 16, 2007. Complainant contends that this sale, executed on February 2, 2012, transferred to Complainant all interests and the associated goodwill to the acquired mark which has a priority date coinciding with the date of priority and protections granted by the Australian Trademark Office of January 5, 2006. It avers that Complainant assumed and incorporated the rights associated with the acquired mark into its business and later the same year sought registrations for derivations of the acquired mark by applying for the Complainant’s registered marks as a continuation of such acquired rights. Complainant submits that when considering the totality of the evidence regarding the family of trademark rights surrounding the registered marks, including the acquired mark, the relevant date of priority of Complainant’s trademark rights is at least January 5, 2006.
However, the Panel is of the view that the filing date or the priority date of a family mark cannot be the priority date of the Complainant’s DAREDEVIL BREWING CO mark with the USPTO (e.g., Reg. No. 4,375,264, filed November 12, 2012, registered July 30, 2013). Furthermore, the Panel finds that Complainant’s DAREDEVIL CROSSING (U.S. Reg. No. 3,199,118) is longer existent because it was cancelled on October 4, 2013 due to the failure of filing an acceptable declaration of use of the mark. The United States is the only designated state of the International Reg. No. 882207 under which U.S. Reg. No.3,199,118 was registered, and thus even the International Reg. No.882207 no longer covers any jurisdiction.
The fact that Complainant’s trademark post-dates Respondent’s registration of the disputed domain name by more than five (5) years precludes a finding of bad faith registration. See LML Investments LLC v. P.A. Gordon, FA 1571756 (Nat. Arb. Forum Sept., 2014) (“Respondent could not have registered the domain name to target Complainant’s mark as Complainant did not register the Country Girl mark for 7 years after Respondent registered the disputed domain name. As such, the Panel finds no evidence of bad faith under Policy ¶ 4(a)(i).”).
Complainant avers that where Respondent does not file a response to the Amended Complaint, the allegations stated therein are deemed admitted for the purpose of the proceeding, and where a Respondent does not address an issue or provide an explanation in response to the Complainant’s allegations, “Respondent admits by its silence to Complainant’s claims. However, the Panel observes that a respondent's default does not automatically result in a decision in favor of the complainant. Complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. There are many examples of cases (typically involving complaints based on wholly unsupported assertions or mere conclusory statements) to which there has been no response where (not withstanding such respondent default) the decision has nonetheless gone in favor of the respondent on grounds that the complainant has failed to prove its case. See The Vanguard Group, Inc. v. Lorna Kang, D2002-1064 (WIPO, January 20, 2003) and Berlitz Investment Corp. v. Stefan Tinculescu, D2003-0465 (WIPO, August 22, 2003).
Therefore, the Panel determines that Complainant failed to establish Respondent’s registration of the disputed domain name in bad faith and concludes that Respondent did not register the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
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 <daredevilbrewing.com> domain name REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: April 23, 2015
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