Micah Hargress v. PARAMOUNT INTERNET
Claim Number: FA1509001638609
Complainant is Micah Hargress (“Complainant”), African Regional IP Organization. Respondent is PARAMOUNT INTERNET (“Respondent”), represented by David Levin of UDRP.XYZ, District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hargress.com>, registered with eNom, 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.
David Sorkin, Debrett Lyons and Héctor Ariel Manoff (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on September 19, 2015; the Forum received payment on September 19, 2015.
On September 21, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <hargress.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 September 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@hargress.com. Also on September 22, 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 October 30, 2015.
On November 6, 2015, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the Forum appointed David Sorkin, Debrett Lyons and Héctor Ariel Manoff (Chair) as Panelists as Panelists.
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
1- The trademark, HARGRESS, is being used, unauthorized, as a domain name, <hargress.com>.
2- The HARGRESS trademark was filed with the USPTO by Complainant on June 9, 2005 and it became a public record.
3- The <hargress.com> domain was registered on March 9, 2006.
4- Respondent has registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name.
5- Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
B. Respondent
1- Respondent was unaware of Complainant when registering the domain name since its registration predates the origin of Complainant's mark: the domain name was registered on March 9, 2006 and the mark was first used on December 23, 2007.
2- The HARGRESS trademark application, Serial No. 78647134 (intent of use), was denied by the USPTO and, as such, does not confer any rights to the applicant.
3- Respondent argues Complainant has engaged in a clear case of Reverse Domain Hijacking.
4- Respondent is in the business of registering valuable non-infringing generic domain names and surnames because Respondent knew that they are inherently scarce, attractive, and useful to many parties and it is a fully acceptable practice in the domain name industry, consistent with UDRP guidelines and established precedents.
5- Respondent has 100s of similar registrations for generic terms and surnames.
6- “Hargress” is a common surname, which has been recognized by the USPTO when registration was refused because the applied-for mark was primarily merely a surname.
7- Complaint’s additional trademark (Serial No 7790483) is another “intent to use” filing amended to reflect first use of December 23 2010, again post dating the disputed domain name registration, and again denied by the USPTO, hence of no probative value.
8- The only actual HARGRESS trademark registration at the USPTO (Reg. No. 4197956) was filed on January 13, 2012 and registered on August 28, 2012 (6 years after the registration of the domain name and one year after Complainant contacted Respondent via e-mail to request the domain name.
9- Registration No. 4197956 was accepted only with a designation of 2(f) “Acquired Distinctiveness or Secondary Meaning” since it was a common surname.
10- Complainant indicates different dates regarding first use of the mark: December 23, 2007 in the first application; December 23, 2010 in the second; and finally November 7, 2003 in order to qualify his pending application which requires at least 5 years of prior use to justify a 2(f) exception (see Exhibit P).
11- Complainant has failed to provide any evidence of a valid trademark registration prior to the domain name registration.
12- The HARGRESS trademark lacks any fame and has not “acquired distinctiveness and secondary meaning.”
13- The webpage “hargressonline.com” used by Complainant since October 3, 2008 is nothing but a one page inactive placeholder with an email link to a “Stacey Woodson”. Products are not available on the East Coast where Respondent resides, nor in any other outlet throughout the nation other than Complainant's personal location (a residential address).
14- Complainant had not even begun to use the mark HARGRESS when Respondent registered the Disputed Domain on March 9, 2006 so Complainant’s alleged mark provides no enforceable rights under the Policy with respect to the disputed domain.
15- Complainant fails to prove that Respondent has no rights or legitimate interest in the name.
16- The registration of a word based on the fact that it is a common surname establishes Respondent’s legitimate interest in the disputed domain name. Respondent registered the disputed domain because it incorporates the surname “Hargress,” evidenced by the fact that no trademark for HARGRESS existed at the time the domain name was registered. Respondent was entitled to register a domain name based on the fact that it contained a common surname, and that established its legitimate interest.
17- Respondent has used the disputed domain to generate advertising income in connection with genealogy websites and this constitutes a bona fide offering of goods and services further establishing Respondent’s legitimate interest.
18- Complainant has failed to prove Respondent’s bad faith registration and use. Respondent registered the disputed domain on March 9, 2006, almost two years before Complainant's first use of the mark and almost five years before the second application; the USPTO rejected both applications and, thus, these have no bearing and establish no priority date. The registered trademark was six years after the domain name registration.
19- Complainant has proffered no evidence of any kind demonstrating that Respondent had any knowledge of its mark or business operations in 2006.
20- Respondent requests the Panel make a finding of reverse domain name hijacking based on the fact that the domain name registration date precedes the application date of Complainant’s sole registered trademark by almost 6 years, it further predates the self-declared date of first use of the mark by 2 to 5 years based on two other previously filed and rejected applications. Complainant knew or should have known at the time it filed the complaint that it could not prove that the domain name was registered in bad faith.
Complainant has exclusive rights to the trademark HARGRESS in the United States, (Registration No. Reg. No. 4,197,956, filed on January 13, 2012 and registered on August 28, 2012) to use it in connection with tote bags, leather, and, luxury hand bags.
Respondent registered the domain name <hargress.com> on March 9, 2006, established rights or legitimate interests in the disputed domain name and neither registered nor used it in bad faith.
Complainant has not engaged in reverse domain name hijacking.
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 has exclusive rights to the trademark HARGRESS in the United States, (Registration No. Reg. No. 4,197,956, filed on January 13, 2012 and registered on August 28, 2012) to use it in connection with tote bags, leather, luxury hand bags, purses, and backpacks (Exhibit P, submitted by Respondent).
Respondent registered the identical domain name <hargress.com> on March 9, 2006.
Previous Panels have found that registration of a mark with the USPTO is sufficient to demonstrate rights in the mark. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”).
The Panel finds that the disputed domain name <hargress.com> is identical to
the HARGRESS mark and that Policy ¶ 4(a)(i) has been satisfied.
Respondent argued that it is in the business of registering valuable non-infringing generic domain names and surnames because they are inherently scarce, attractive, and useful to many parties. Respondent proved to have 100s of similar registrations for generic terms and surnames. (Exhibit D).
Respondent proves that the USPTO had recognized that HARGRESS is a common surname (Exhibit K).
Prior panels have determined that the sale of domain names containing generic terms can constitute a bona fide offering of goods and services under the Policy. See Schwartz & Co., LLC v. Eric Ehmer, FA1503001608725, April 21, 2015 (However, the Panel finds that the mere offer to sell the domain name is not sufficient to exclude a bona fide offering of goods or services by Respondent);
see also Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that using a domain name consisting of a common descriptive and generic expression as a portal to a website featuring various advertisements and links is a bona fide offering of goods or services); see also Vanity Shop of Grand Forks, Inc. v. Domain Administrator / Vertical Axis Inc., FA1412001595932, January 20, 2015 ( Where a domain name is comprised of common dictionary words that also correspond to a trademark, its use for a PPC link page can give rise to legitimate interests if the page does contains links related to the common meaning of the words, and not to their trademark sense).
This Panel finds that there is no evidence that Respondent, at the time of registration of the domain name, knew or should have known of the existence of Complainant’s registration. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
The Panel finds that Complainant failed to satisfy Policy ¶ 4(a)(ii).
Complainant must prove that the disputed domain name was registered and has been used in bad faith. Even though Complainant argues that Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name, no evidence was brought to support this argument.
The evidence suggests that Respondent registered the disputed domain name as part of business of registering valuable non-infringing generic domain names and surnames to be sold later and that has used the disputed domain to generate advertising income in connection with genealogy websites and this constitutes a bona fide offering of goods and services further establishing Respondent’s legitimate interest.
Moreover, Respondent registered the disputed domain on March 9, 2006, almost two years before Respondent's first use of the mark and almost five years before the second application. The USPTO rejected both applications and, thus, these have no bearing and establish no priority date. The registered trademark was six years after the domain name registration.
Complainant has not submitted proof to demonstrate that Respondent had any knowledge of its mark or business operations in 2006. See Kanal, Inc. v. Domain Admin, FA 1478238 (Nat. Arb. Forum Feb. 12, 2013) ("To have registered the domain name in bad faith, Respondent must have been aware of Complainant or its mark when he registered the domain name, and the registration must in some way have been targeted at Complainant or its mark.").
Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location." The Panel finds that it is not the case and that Complainant failed to satisfy Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Respondent requests a finding of reverse domain name hijacking against Complainant. Prior panels have determined that despite Complainant’s failure to satisfy its burden under the Policy, it is not necessarily a reverse domain name hijacking case. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”).
Reverse domain name hijacking requires bad faith on Complainant’s part: Complainant knew or should not have known that one of the three elements in Policy ¶ 4(a) was absent). See Luxus Management Co. Ltd. v. Bunger, Owe / Bunger, FA1507001629725, August 31, 2015 (In general, the onus of proving Complainant bad faith in such cases is on the respondent and the success of the respondent is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would need to show knowledge on the part of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name).
The Panel concludes that there is not sufficient evidence to show that Complainant has engaged in reverse domain name hijacking.
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 <hargress.com> domain name REMAIN WITH Respondent.
Héctor Ariel Manoff (Chair)
(for the Panel)
David Sorkin
Debrett Lyons
Dated: November 13, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page