Madwire, LLC v. Digital Privacy Corporation et al.
Claim Number: FA1607001684058
Complainant: Madwire, LLC of Fort Collins, Colorado, United States of America.
Complainant Representative: Madwire, LLC of Fort Collins, Colorado, United States of America.
Respondent: Digital Privacy Corporation of Vista, California, US.
Marketing of Dubai, Unknown, United Arab Emirates.
REGISTRIES and REGISTRARS
Registries: Fern Pass, LLC
Registrars: 101domain GRS Limited
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 Examiner in this proceeding.
Eleni Lappa, as Examiner.
Complainant submitted: July 15, 2016
Commencement: July 18, 2016
Response Date: July 19, 2016
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant is an American company primarily engaged in the field of marketing. Respondent is an individual based in Dubai, United Arab Emirates, also primarily engaged in the field of marketing.
The present dispute involves the registration of the domain name 360.marketing by the Respondent and Complainant’s assertions that said registration and use by the Respondent violates the URS Procedre 1.2.6, discussed in more detail below.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
1. The registered domain name is identical or confusingly similar to a word or mark [URS/.usRS 1.2.6.1] for which the Complainant holds a valid national or regional registration and that is in current use
2. Registrant has no legitimate right or interest to the domain name [URS/.usRS 1.2.6.2]
3. [if URS] The domain name(s) was registered and is being used in bad faith [URS 1.2.6.3]
With regard to point 1:
- Complainant submits that, the domain name in question <360.marketing> is confusingly similar to its prior US trademark registration marketing.360, covering various services in classes 35 and 42.
- Respondent submits that the domain name is a commonly used term in marketing that was available for purchase and it was not purchased with the intention of competing with complainant business.
- This Panel finds that the domain name in question is a commonly used term in marketing and is nevertheless similar to prior rights owned by the Complainant which are valid in the USA only. As such the risk of confusion to the consuming public is minimized to the extent that the likelihood of a party encountering Respondent’s website and associating it with the Complainant is very limited indeed but cannot be ruled out entirely.
With regard to point 2:
- Complainant has submitted that Respondent had no prior rights relevant to the domain name in question.
- Respondent has offered no evidence and has made no submissions or reference to the existence of any prior relevant rights in his name for the domain name in question.
- This Panel finds that the Complainant has valid, relevant prior rights to the domain name in question and Respondent has no similar prior rights relevant to the domain name in question.
With regard to point 3:
- Complainant asserts that Respondent registered the domain name in question a full three years after Complainant begun using its trademark, and as such that Respondent knew or should have known of Complainant’s earlier rights prior to registering the domain name in question and that the domain name in question is being used for almost identical services to those of Complainant thus asserting the risk of confused / misled consumers as an indication of bad faith use by Respondent.
- Respondent argues that he has no bad faith intentions or use of the domain name in question.
- This Panel finds that there is no clear and convincing evidence that the domain name in question was registered in bad faith. Indeed the Complainant’s rights are earlier however they relate to a commonly used term in marketing and there are no facts supporting the assertion that the Respondent knew or should have known of the Complainant’s prior relevant rights since Complainant’s trademark is not famous or particularly distinctive or fanciful but relates to a descriptive term in the marketing sector. The Panel further finds that there is no clear and convincing evidence that the domain name was used in bad faith as there is no clear indication that it was knowingly used by Respondent in order to conduct business in a setting that resembles, without copying, that of the Complainant for the purpose of competing with Complainant directly.
After reviewing the parties’ submissions, the Examiner determines that
theComplainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.
<360.marketing>
Eleni Lappa, Examiner
Dated: July 19, 2016
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