MakerPlace, Inc. v. Michael Salmon
Claim Number: FA1604001671961
Complainant is MakerPlace, Inc. (“Complainant”), represented by Steven S. Herrick, California, USA. Respondent is Michael Salmon (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <makerplace.com>, registered with GoDaddy.com, LLC.
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.
ROBERT T. PFEUFFER, Senior District Judge, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 25, 2016; the Forum received payment on April 25, 2016.
On April 26, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <makerplace.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 April 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 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@makerplace.com. Also on April 28, 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 May 18, 2016.
On May 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed ROBERT T. PFEUFFER, 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
Complainant holds trademark rights in the MAKERPLACE mark in respect of its United States Patent and Trademark Office (“USPTO”) registration (Registry No. 4,327,455, first use Mar. 13, 2012, filed Aug. 5, 2012, registered Apr. 30, 2013). Respondent’s <makerplace.com> domain name is identical to the MAKERPLACE mark as it only attaches the “.com” generic top-level domain to the completely incorporated mark.
Respondent has no rights or legitimate interests in the <makerplace.com> domain name. Respondent is not commonly known by the disputed domain. Respondent misappropriated the disputed domain after he was placed in charge of various aspects of Complainant’s business in November 2011. Thereafter, Respondent attempted to sell the disputed domain to competitors of Complainant.
Respondent used the disputed domain in bad faith. Respondent registered the disputed domain in good faith as an anticipated agent of Complainant. Respondent offered the domain for sale in violation of Policy ¶ 4(b)(i).
B. Respondent
Respondent agrees that he registered the domain in good faith as it was registered in his name because there was no corporate entity in which the domain could have been registered. Respondent refutes Complainant’s contention that the domain was used in bad faith. In the four years subsequent to the domain’s registration, no issues arose regarding the registration of the domain, or any other account in his name, and that no transfer was sought once a corporate entity was formed. Respondent attempted to sell the domain because Complainant had shown no interest in compensating Respondent for the work he had put into it once their agency relationship ended.
The Panel notes that the disputed domain was registered on February 21, 2011.
The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Respondent has no rights or legitimate interests in respect of the domain name.
The domain name has NOT been registered and used in bad faith.
Identical/Confusingly Similar: Policy ¶ 4(a)(i).
Complainant alleges it holds trademark rights in the MAKERPLACE mark in respect of a USPTO registration (Registry No. 4,327,455, first use Mar. 13, 2012, filed Aug. 5, 2012, registered Apr. 30, 2013). See Compl., at Attached Annex B. Panels have seen rights in a registered mark to date back to the filing date of such a registration. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Therefore, the Panel finds Policy ¶ 4(a)(i) rights for Complainant in the MAKERPLACE mark which date back to the filing date of August 5, 2012.
Next, Complainant contends that Respondent’s <makerplace.com> domain name is identical to the MAKERPLACE mark as it only attaches the “.com” generic top-level domain to the completely incorporated mark. Such an addition has been considered irrelevant. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Therefore, the Panel considers Respondent’s <makerplace.com> domain name identical to the MAKERPLACE mark under Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
The Panel understands 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), and 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 (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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <makerplace.com> domain name. In analyzing Policy ¶ 4(c)(ii), the Panel notes the relevant WHOIS information which lists registrant as “Michael Salmon.” Respondent has also not made any contentions with respect to this element of the Policy. Therefore, this Panel agrees there is no basis to find Respondent commonly known by the disputed domain name. See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant contends that Respondent misappropriated the disputed domain after he was placed in charge of various aspects of Complainant’s business in November 2011. Thereafter, Complainant argues that Respondent attempted to sell the disputed domain to competitors of Complainant. Complainant also alleges that Respondent conceded in email correspondence that his purpose in using the disputed domain was for extortion. Panels have agreed even general offers for sale cannot support rights or legitimate interests. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Accordingly, even while Complainant has not submitted evidence of Respondent’s actual use of the disputed domain (which might speak to rights under Policy ¶¶ 4(c)(i) and (iii)), the Panel finds that Respondent has not supported such rights under Policy ¶ 4(a)(ii) as it has attempted to sell the domain.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Complainant argues that Respondent used the disputed domain in bad faith. Complainant also alleges that Respondent registered the disputed domain in good faith as an anticipated agent of Complainant. While Respondent has allegedly offered the disputed domain for sale, the Panel might find bad faith use under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Therefore, the Panel could find bad faith use under Policy ¶ 4(b)(i).
However, the Panel finds that Complainant has conceded that Respondent did not register the disputed domain in bad faith when it stated, “We believe Mr. Salmon originally registered the domain incorrectly but in good faith.” Analogous to the facts here, the Panel notes Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (finding that the respondent did not register the disputed domain name in bad faith where it “registered the Domain Name with the full consent and knowledge of Complainant” and therefore “did not have the requisite bad faith when he registered the Domain Name, which is an express requirement of the Policy”). While Respondent registered the domain with the consent of Complainant in some form of agency relationship, and reportedly operated the domain for a period of time without issue, this Panel finds that Respondent cannot be found to have violated 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 <makerplace.com> domain name SHALL REMAIN WITH THE Respondent.
ROBERT T. PFEUFFER
Dated: June 4, 2016
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