Research Now Group, Inc. v. Vernon Pursley
Claim Number: FA1601001658566
Complainant is Research Now Group, Inc. (“Complainant”), represented by Denis V. Shamo of Baker & McKenzie LLP, Texas, USA. Respondent is Vernon Pursley (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <researchnow.xyz>, registered with NameCheap, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2016; the Forum received payment on January 28, 2016.
On January 29, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <researchnow.xyz> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2016 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@researchnow.xyz. Also on February 1, 2016, 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 February 26, 2016.
Complainant filed an Additional Submission on March 2, 2016. Respondent filed an Additional Submission on March 7, 2016. Both submissions were compliant with Supplemental Rule 7.
On March 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Policy ¶ 4(a)(i)
Complainant has rights in the RESEARCH NOW mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,025,122, registered on September 13, 2011). Respondent’s <researchnow.xyz> domain name is identical to the RESEARCH NOW mark because it wholly incorporates the mark, less the space, while adding only the generic top-level domain (“gTLD”) “.xyz.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <researchnow.xyz> domain name because it is not authorized to use the RESEARCH NOW mark and because the WHOIS information does not suggest Respondent is so known. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <researchnow.xyz> domain resolves to an inactive website.
Policy ¶ 4(a)(iii)
Respondent uses the <researchnow.xyz> domain name in bad faith because it resolves to an inactive website, from which Respondent’s intent to attract Internet users for commercial gain can be inferred. Respondent registered the <researchnow.xyz> domain name in bad faith because it did so with constructive knowledge of Complainant’s rights in the RESEARCH NOW mark.
B. Respondent
Policy ¶ 4(a)(i)
The terms of the <researchnow.xyz> domain name are generic.
Policy ¶ 4(a)(ii)
Complainant has failed to set out a prima facie case that Respondent lacks rights and legitimate interests in the <researchnow.xyz> domain name, while Respondent has demonstrated preparations to use the domain. The terms of the <researchnow.xyz> domain name are generic.
Policy ¶ 4(a)(iii)
Complainant has failed to present evidence that Respondent uses the <researchnow.xyz> domain name in bad faith, while Respondent has demonstrated preparations to use the domain. The terms of the <researchnow.xyz> domain name are generic.
C. Additional Submissions
Complainant asserted that Respondent’s original response did not contest the likelihood of confusion between the domain name and Complainant’s mark, and that Complainant’s registration created a rebuttable presumption that the Complainant owns exclusive rights in a distinctive mark. Complainant contended that Respondent misinterpreted the applicability of the US Federal Trademark Act and that Respondent’s efforts at indicating any preparation for use of the disputed domain were woefully insufficient. Complainant also contended that Respondent’s registration, coupled with lack of active use, was prima facie evidence of intent to attract Internet users for commercial gain at Complainant’s expense.
Respondent asserted that Complainant failed to provide evidence that there is a likelihood of confusion, and that Respondent’s acts of securing a hosting service adequately indicated preparation for use of the domain name. Respondent contended that he planned to use the disputed domain as a “Natural Organic and Wholesome related website”…and that it was common practice for there to be a 6-12 month period before bringing a website on line. Respondent argued he had not violated any of the circumstances listed under the UDRP ¶ 4(a)(iii). Respondent also “suggested” that this case resembled a Reverse Domain Name Hijacking.
FINDINGS
Complainant is Research Now Group, Inc. of Plano, TX, USA. Complainant is the owner of numerous domestic and international registrations for the mark RESEARCH NOW, and related formatives, which it has continuously used since at least as early as 2009 in connection with its provision of opinion panel and research services.
Respondent is Vernon Pursley of Lake Saint Louis, MO, USA. Respondent’s registrar’s address is listed as Los Angeles, CA, USA. Respondent registered the disputed domain name on or about November 11, 2015.
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 mark RESEARCH NOW mark through its registration with the USPTO (e.g., Reg. No. 4,025,122, registered on September 13, 2011). Accordingly, the Panel finds that Complainant has rights in the RESEARCH NOW mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <researchnow.xyz> domain name is identical to the RESEARCH NOW mark because it wholly incorporates the mark, while adding only the gTLD “.xyz.” The Panel notes that the domain also deletes the space between the words of the RESEARCH NOW mark. The Panel finds that the <researchnow.xyz> domain name is identical to the RESEARCH NOW mark according to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
While Respondent contends that the <researchnow.xyz> domain name is comprised of common and generic terms and as such cannot be found to be identical to Complainant’s mark, the Panel notes that such a determination is not necessary under Policy ¶ 4(a)(i) as 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)).
The Panel finds that the <researchnow.xyz> domain name is identical to the RESEARCH NOW trademark under Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts 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). The Complainant has met this burden.
Complainant claims, and Respondent does not dispute, that Respondent is not commonly known by the <researchnow.xyz> domain name, because he is not authorized to use the RESEARCH NOW mark, and because the WHOIS information does not suggest Respondent is so known. The Panel notes that the available WHOIS information lists “Vernon Pursley” as Registrant. The Panel finds that Respondent is not commonly known by the <researchnow.xyz> domain name according to Policy ¶ 4(a)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant argues that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <researchnow.xyz> domain resolves to an inactive website. Complainant has provided a screenshot in support of its contention. Respondent points to his procurement of website hosting services and a “Name Server,” which lists “DSN1.STABLETRANSIT.COM.” as proof Respondent intends to use the domain for a website related to “Natural Organic and Wholesome”. Respondent maintains that this suffices to show that Respondent has rights and legitimate interests in the <researchnow.xyz> domain name.
The Panel finds that Respondent’s evidence fails to provide sufficient proof of demonstrable preparations to use the domain name. Respondent has provided no evidence in support of what it means by establishing a website “related to Natural Organic and Wholesome”. Web hosting and name servers are required by anyone setting up a website and have no bearing on the legitimacy or propriety of the rights in the domain name being used. The Panel finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent argues further that the terms in the <researchnow.xyz> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Respondent attempts to support his position by improperly dissecting Complainant’s mark as a whole and referencing dictionary usage for each word constituting Complainant’s mark. Respondent provides no support for his argument that Complainant’s mark is generic. Respondent bears the burden of proving the distinctiveness attributable to Complainant’s registered mark is no longer present. Respondent has tendered no evidence of common usage by the general public, or any market related portion thereof, of Complainant’s registered mark. The Panel finds that Respondent has failed to show that Complainant’s mark is generic and that Respondent is making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Complainant has proven this element.
Complainant contends that Respondent uses the <researchnow.xyz> domain name in bad faith because the website is used to attract Internet users for commercial gain. Complainant argues that Respondent’s intention to do so can be inferred from the identical nature between the <researchnow.xyz> domain name and the RESEARCH NOW mark. Respondent counters that Complainant has not provided any evidence to show that Respondent attempts to attract Internet users for commercial gain. Respondent contends, instead, that Complainant’s evidence shows that Respondent has demonstrated preparation to use the <researchnow.xyz> domain name. The Panel finds Respondent’s evidence lacking and that a fair inference supports a conclusion that Respondent uses the domain name in bad faith according to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant argues that Respondent uses the <researchnow.xyz> domain name in bad faith because it resolves to an inactive website. Respondent argues that he should have 6 to 12 months to develop a website and bring it online in order to show his prospective business is unrelated to Complainant and will not cause confusion. The Respondent provides no support regarding why such a concession should be made which is especially problematic since he is using Complainant’s full registered mark. Prior panels have found that failure to make active use of a domain name indicates the registration is in bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The Panel here finds that Respondent registered and uses the <researchnow.xyz> domain name in bad faith under Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <researchnow.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 16, 2016
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