Griffin Technology, Inc. v. Nicholas Bonner
Claim Number: FA1506001625499
Complainant is Griffin Technology, Inc. (“Complainant”), represented by Martha B. Allard of Bass, Berry & Sims PLC, Tennessee, USA. Respondent is Nicholas Bonner (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <griffin.technology>, registered with Key-Systems, 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.
Jeffrey M. Samuels as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2015; the Forum received payment on June 22, 2015.
On June 23, 2015, Key-Systems, LLC confirmed by e-mail to the Forum that the <griffin.technology> domain name is registered with Key-Systems, LLC and that Respondent is the current registrant of the name. Key-Systems, LLC has verified that Respondent is bound by the Key-Systems, 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 June 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@griffin.technology. Also on June 26, 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 July 16, 2015.
On July 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels 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 Griffin Technology, Inc. is an electronic technology company that designs, makes, and sells consumer electronics and accessories for personal electronic devices, namely, tablet computers, smart phones, personal computers, and portable media players. Complainant, which was incorporated in October 1996, owns a number of U.S. trademark registrations[1] that incorporate the term GRIFFIN and, according to Complainant, has offered goods and services under its GRIFFIN formative marks for almost 20 years.[2] Complainant is also the owner of a large number of domain name registrations that incorporate the term “griffin,” including griffintechnology.com, griffintechnologies.com, griffintechnology.org, griffintechnology.info, griffintechnology.us, griffintechnology.biz, griffintechnology.services, and grffintechnology.mobi.
Complainant alleges that the disputed domain name, griffin.technology, is confusingly similar to its marks, noting that the domain name is virtually identical to Complainant’s corporate name, missing only the term “Inc.”
Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent is not commonly known by the griffin.technology domain name and does not own any registered marks or have any common law rights in the GRIFFIN mark or any permutation thereof. According to Complainant, the domain name is not used in connection with a bona fide offering of goods or services, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and Respondent is not authorized or licensed to register or use the domain name.
With respect to the issue of “bad faith” registration and use, Complainant indicates that the disputed domain name was registered on February 18, 2014, more than a decade after Complainant’s adoption and use of the GRIFFIN marks and almost two decades after Complainant’s registration of the griffintechnology.com domain name, which took place in July 1997.
Complainant maintains that the disputed domain name appears to have been registered in order to prevent Complainant from doing so and that Respondent appears to be engaged in a pattern of such conduct. Complainant indicates that Respondent is the owner of over 120 domain names, many of which incorporate the well-known marks of third parties, such as pepsi.center and citigroup.solutions, and has been the subject of two other UDRP proceedings, both of which resulted in decisions ordering the transfer of the domain name in issue. See Citigroup Inc. v. Bonner, FA 1604916 (Nat. Arb. Forum Mar. 18, 2015) and Riverbed Technology, Inc. v. Bonner, FA 1608365 (Nat. Arb. Forum Apr. 17, 2015).
Complainant further asserts that Respondent’s actions in registering the disputed domain name create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement by Complainant and that Respondent registered the domain name with actual or constructive knowledge of Complainant’s rights in the GRIFFIN marks. “Any lack of knowledge or good faith of the Respondent would be difficult to believe in light of the fact that Respondent chose the same unique combination of words that are virtually identical to Complainant’s corporate name,” Complainant declares. “Further, Respondent is seeking to unfairly and opportunistically benefit from the goodwill associated with the Griffin Marks.”
B. Respondent
In his Response, Respondent Nicholas Bonner contends that the term “griffin” is a common noun and that the new domain extension “technology” is not directly related to the name itself. Respondent notes that the disputed domain name is not currently being used and there is no website or information at the destination. He further asserts that “it is a fair use of the common name and is not related as I am not offering any products or services at all.”
Respondent disputes the contention that the domain name griffin.technology was registered in bad faith. He points out that he has been the owner of the domain name for 17 months and has shown no interest in selling the domain name to Complainant and there is no evidence to suggest that “this common domain was purchased with the intent to sell, rent, or otherwise transfer to the Complainant.”
Respondent also asserts that he did not register the domain name to prevent Complainant from obtaining it and has no intention of disrupting the business of Complainant. According to Respondent, “[s]ince I do not have my own business, and because the website remains empty, and have no similar marks or content, there is no motive or means of any type of confusion with the name or website of the Complainant.”
The Panel finds that: (1) the disputed domain name is confusingly similar to a mark in which Complainant has rights: (2) Respondent has no rights or legitimate interests in the disputed domain name; and (3) the disputed domain name was registered and is being used 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.
The Panel finds that the disputed domain name, griffin.technology, is confusingly similar to the mark GRIFFIN. The domain name incorporates in full the GRIFFIN mark and the inclusion in the domain name of the top-level extension “technology,” being merely descriptive or generic in character, does not defeat a determination of confusing similarity.
The evidence, in particular Complainant’s U.S. trademark registrations and its use of the GRIFFIN marks, establishes that Complainant has rights in such marks. 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.”). Moreover, there is no evidence that “griffin” is a common word, as Respondent asserts, and ever if there was, such fact would not establish that the term GRIFFIN, as used by Complainant, is not a protectable mark. Many common words, such as “apple” and “shell,” as used on or in connection with goods and services, are protectable trademarks.
.
The Panel finds that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. Respondent concedes that the domain name is not currently being used in connection with an active website. Such concession is inconsistent with the assertion that Respondent is making fair use of the domain name. There is no evidence to support a finding that any of the circumstances set forth in paragraph 4(c) of the Policy is applicable.
The Panel concludes that the domain name was registered and is being used in bad faith. Where a complainant has shown the respondent to have been the subject of other UDRP proceedings that have resulted in transfer orders, prior panels have found bad faith under paragraph 4(b)(ii) of the Policy. See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s 41prior UDRP rulings were evidence of bad faith registration under paragraph 4(b)(ii)) of the Policy.) As noted above, on at least two prior occasions, Respondent has been the subject of UDRP proceedings where the panel ordered the transfer of the domain name at issue.
Moreover, the evidence, as set forth in Annex C to the Complaint, establishes that Respondent has engaged in a pattern of registering domain names incorporating marks owned by another entity. As Respondent notes in his Response, “I have recently purchased common names that appeal to me to give me the option to decide in the future.” The Panel finds that Respondent registered the disputed domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, within the meaning of paragraph 4(b)(ii) of the Policy.
The fact that the domain name in issue incorporates the top-level domain “technology” and that Complainant is a technology company is further evidence of Respondent’s bad faith registration. Under the facts of this case, Respondent’s registration of a domain name that incorporates the top-level domain “technology” convinces the Panel that Respondent must have had actual knowledge of Complainant's rights in the GRIFFIN mark prior to registration of the domain name. Such a determination supports a finding of bad faith. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Finally, in view of the above, the fact that the disputed domain name is not currently being used in connection with an active website does not prevent a finding of bad faith. “… [P]anels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding) does not as such prevent a finding of bad faith.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, §3.2.
Finding that all three elements required under the ICANN Policy have been established, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <griffin.technology> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: July 23, 2015
[1] See U.S. Trademark Registration Nos. 3,556,144 and 3,938,740).
[2] The Panel notes, however, that, based on the available evidence, the earliest date of first use of any of Complainant’s marks is November 2002.
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