Richard Izzo Toughman Enterprises v. TJ Tryon
Claim Number: FA1704001728347
Complainant is Richard Izzo Toughman Enterprises (“Complainant”), New York, U.S.A. Respondent is TJ Tryon (“Respondent”), Indiana, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toughmanindiana.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 21, 2017; the Forum received payment on April 21, 2017.
On April 25, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <toughmanindiana.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 May 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2017 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@toughmanindiana.com. Also on May 4, 2017, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[All three elements of the Policy must be alleged and proved by the Complainant. UDRP Para. 4(a).] [The analysis in this section may require more space than provided, but the entire Complaint shall not exceed fifteen (15) pages. FORUM Supp. Rule 4(a).]
[a.] Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
I own the company Toughman Enterprises a Triathlon Company, I own ALL the domain names with TOUGHMAN included in the name, I am the owner of the trademarks for TOUGHMAN for the US. This includes Classes: 41 that covers putting on athletic events to include: swim, bike, run. I also own class 25 that includes apparel. Through using the domain name ToughmanIndiana.com Mr. Tryon has on his website that his race is part of our registered trademarked brand and he is not. He is not authorized to use this name.
[b.] Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(c).
I own the company Toughman Enterprises a Triathlon Company, I own ALL the domain names with TOUGHMAN included in the name, I am the owner of the trademarks for TOUGHMAN for the US. This includes Classes: 41 that covers putting on athletic events to include: swim, bike, run. I also own class 25 that includes apparel. Through using the domain name ToughmanIndiana.com Mr. Tryon has on his website that his race is part of our registered trademarked brand and he is not. He is not authorized to use this name.
[c.] Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).
Trademark infringement is about confusion. Mr. Tryon is trying to confuse potential athletes that he is part of our brand. He is not currently a licensed Toughman branded race. Plus on his website he has Toughman listed to make athletes think that this is our race and it is not.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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) Complainant has not proven Respondent has no rights or legitimate interests in respect of the domain name; and
(3) Complainant has not proven the domain name has been 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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the TOUGHMAN mark. Registration of a mark with the United States Patent and Trademark Office (“USPTO”) is sufficient to establish rights in that mark (Reg. No. 3878805, registered November 23, 2010). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant registered the TOUGHMAN mark with the USPTO. Complainant has adequately established rights in the TOUGHMAN mark.
Complainant makes no contentions under an identical or confusingly similar analysis under Policy ¶4(a)(i). In fact, Complainant’s complaint is the sparsest UDRP complaint this Panel has ever seen.
However, this part of the analysis is fairly simple. Respondent uses Complainant’s entire mark with a geographical identifier of “Indiana”, followed by a “.com” gTLD. Addition of a geographic term to a mark to form a domain name is insufficient to distinguish the domain name from the mark under Policy ¶4(a)(i) analysis for confusing similarity. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity). Likewise, a TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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 claims Respondent is not authorized to use the <toughmanindiana.com> domain name. Where there is no response, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “TJ Tyron” as the registrant. Complainant has never authorized Respondent to use its TOUGHMAN mark and is in no way affiliated with Complainant. There is no obvious relationship between Respondent’s name and the disputed domain name. The Panel can (and does) conclude Respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent is not commonly known by the disputed domain name.
Complainant does not make any claim as to whether Respondent is using the disputed domain name for a bona fide offering of goods or services or a legitimate non-commercial fair use. The Panel has no evidence what business Complainant is in. The Panel has no idea what business Respondent is in. A single screenshot does not provide enough information. The Panel even cannot determine whether or not the parties are competitors. How can the Panel determine who has rights, or even what rights those are? Even when a respondent does not submit a response in a proceeding, the complainant still must make a prima facie case. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”) While this Panel is willing to give Complainant some leeway because Complainant is pro se, that does not allow Complainant to ignore its burden of proof. A complainant fails to make a prima facie case when it fails to provide any evidence whatsoever of a respondent’s use of a disputed domain name. See Claessens Prod. Consultants BV v. Claessens Int’l Ltd., FA 238656 (Forum Apr. 23, 2004) (finding that Complainant failed to meet its burden pursuant to Policy ¶4(a)(ii) where Complainant neglected to state how Respondent used the disputed domain name in the Complaint). Complainant has failed to carry its burden of producing a prima facie case Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds Policy ¶4(a)(ii) NOT satisfied.
Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel finds Policy ¶4(a)(iii) NOT satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED. This decision is made without prejudice to Complainant recommencing this Proceeding upon fixing the deficiencies in Complainant’s complaint.
Accordingly, it is Ordered the <toughmanindiana.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, May 30, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page