Molly McGowan v. RegTek Whois Envoy
Claim Number: FA1505001621400
Complainant is Molly McGowan (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is RegTek Whois Envoy (“Respondent”), represented by Dana Alden, Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cluttercoach.com>, registered with Registration 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.
Flip Jan Claude Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 27, 2015; the Forum received payment on May 27, 2015.
After numerous requests, the Registrar, Registration Technologies, Inc., has not confirmed to the National Arbitration that the <cluttercoach.com> domain name is registered with Registration Technologies, Inc. or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.
On June 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 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@cluttercoach.com. Also on June 10, 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 June 30, 2015.
On July 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Jan Claude Petillion 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 the following:
- Complainant owns THE CLUTTER COACH mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,535,504, first used in commerce Mar. 2003, filed Jan. 10, 2012, registered May 27, 2014). Complainant provides organizational services for the home or personal purposes, and uses THE CLUTTER COACH mark in connection with those services. The <cluttercoach.com> domain name is confusingly similar to Complainant’s mark.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as Complainant has not given Respondent permission to use its mark in any way. Respondent’s disputed domain name redirects Internet users to Respondent’s primary domain name, <organizingcoach.com>, which Respondent uses to promote its business and offer its services which directly compete with Complainant’s services. See Compl., at Attached Ex. 6.
- Respondent has engaged in bad faith registration and use of the <cluttercoach.com> domain name under Policy ¶ 4(a)(iii). Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent asserts the following:
- Respondent registered the disputed domain name on August 3, 2004, well before Complainant’s USPTO registration. Additionally, Complainant has given sworn testimony denying that any confusion existed between Respondent’s website and Complainant’s mark. Complainant specifically denied the allegation that a likelihood of confusion existed. See Response at Attached Ex. 2, ¶ 5. It is plain that Complainant cannot now claim the existence of confusion. Further, Complainant’s mark is descriptive and Complainant has not established secondary meaning in its mark.
- Respondent has rights and legitimate interests. Respondent is using the disputed domain name to make a bona fide offering of goods or services. Respondent sells her book and a photo kit via the disputed domain name. Further, there is no competition with Complainant in either product category because Complainant is not an author and does not sell books or photo kits. Additionally, Complainant provides services in Massachusetts and has not provided any services in Illinois.
- The disputed domain name was not registered in bad faith because Respondent did not have Complainant in mind at the time of registration. There is no evidence that Respondent knew of Complainant or Complainant’s use of the term “clutter coach.” Respondent did not know of Complainant until 2012. When a domain name is registered before any trademark rights are established, the registration of the domain name is not in bad faith since the registrant could not have contemplated Complainant’s non-existent right in the mark.
Complainant has registered the word mark THE CLUTTER COACH with the United States Patent and Trademark Office (“USPTO”). The mark has been registered for organizational services for the home or personal purposes.
Respondent registered the <cluttercoach.com> domain name on August 3, 2004. Respondent uses it to sell a book and a photo kit, but also to provide services similar to Complainant’s services.
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 owns the word mark THE CLUTTER COACH through its registration with the USPTO on May 27, 2014. The Panel considers that registration with the USPTO is sufficient to establish rights in a trademark. 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 alleges that the <cluttercoach.com> domain name is confusingly similar to Complainant’s mark as the disputed domain name simply removes the word “the” and the space between the words “clutter” and “coach”, and adds the gTLD “.com”. The Panel notes that the removal of articles, such as “the,” does little to distinguish the domain name from the registered mark. See Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the definite article “the” and the preposition “of” from the complainant’s mark and thus, failed to “sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i)”). Further, the Panel considers the removal of spaces and the addition of a gTLD to be irrelevant under Policy ¶ 4(a)(i) analysis. 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)).
Respondent refers to previous opposition proceedings between the parties related to Complainant’s trademark. Respondent alleges that in the framework of these proceedings, Complainant has given sworn testimony denying that any confusion existed between Respondent’s website and Complainant’s mark. The Panel finds that the verification of Respondent’s allegation lies beyond the limited scope of the Policy. In any event, the Panel considers this allegation to be irrelevant in order to assess the confusing similarity of the disputed domain name.
Respondent also contends that the term “clutter coach” is descriptive and not known widely as unique to Complainant. However, the Panel considers that such a determination is not necessary under Policy ¶ 4(a)(i). Indeed, this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
In view of the above, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark.
Complainant asserts that Respondent is not commonly known as the <cluttercoach.com> domain name, nor is Respondent in possession of licensing rights that would allow it to use the mark THE CLUTTER COACH in domain names. In addition, Complainant claims that Respondent is using the domain name to offer services that compete with those offered under Complainant’s mark.
However, the Panel considers that a respondent may have a right or legitimate interest to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent's aim in registering the disputed domain name was to profit from and exploit the complainant's trademark. See, e.g., Harvard Lampoon, Inc. v. Reflex Publishing Inc., D2011-0716 (WIPO July 26, 2011); National Trust for Historic Preservation v. Barry Preston D2005-0424 (WIPO Aug. 10, 2005).
The Panel notes that the term “clutter coach” is used by different persons and entities in the organizational services business. As an example, the Panel found that the domain name <cluttercoach.net> was registered on August 25, 2000.
Respondent registered the disputed domain name on August 3, 2004. Complainant claims that it used its mark since March 2003 but does not provide any evidence supporting this claim. Moreover, the Panel finds thatComplainant does not provide sufficient proof of the reputation of its mark.
In view of the descriptive character of Complainant’s mark, the Panel finds that Respondent may indeed have a right to register and use the <cluttercoach.com> domain name. As Complainant does not provide sufficient proof of the reputation of its mark, the Panel considers that it is at least plausible that Respondent did not aim in registering the disputed domain name to profit from and exploit Complainant's mark.
The Panel notes that Respondent appears to be using the disputed domain name not only to sell a book and a photo kit, but also to advertise services similar to Complainant’s services. However, the Panel finds that in view of the descriptive character of Complainant’s mark, the mere fact that Respondent advertises or even provides competing services is not sufficient to exclude a bona fide offering of goods or services by Respondent.
Having no other elements showing the lack of legitimate interests in the disputed domain name, the Panel finds that Complainant has failed to show the absence of rights or legitimate interest.
Finally, the Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. This case involves disputes regarding trademark rights and usage, trademark infringement, unfair competition, deceptive trade practices and related U.S. law issues beyond the scope of the Panel’s limited jurisdiction under the Policy. See Family Watchdog LLC c. Lester Schweiss (WIPO Case No. D2008-0183). Accordingly, in rendering its decision below, the Panel expresses no view on the respective merits of the parties’ cases, as presented, in the instant dispute.
For Complainant to prevail, it must prove all three elements. Because of the
Panel’s ruling on the issue of Rights or Legitimate Interests, the Panel
makes no ruling on this element. 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); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected,
FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into two
UDRP factors where the Complainant could not satisfy the requirements of [the
third
UDRP factor).
DECISION
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 <cluttercoach.com> domain name REMAIN WITH Respondent.
Flip Jan Claude Petillion, Panelist
Dated: July 21, 2015
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