Outdoorsy Inc. v. Laurel Michalek
Claim Number: FA1705001729910
Complainant is Outdoorsy Inc. (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Laurel Michalek (“Respondent”), represented by Zak Muscovitch of Muscovitch Law P.C., Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <outdoorsy.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 2, 2017; the Forum received payment on May 2, 2017.
On May 4, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <outdoorsy.com> domain name is registered with GoDaddy.com, LLC and that
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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 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@outdoorsy.com. Also on May 12, 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.
A timely Response was received and determined to be complete on June 2, 2017.
On June 08, 2017, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., 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
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notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name <outdoorsy.com> be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Respondent, through its Legal Counsel, provided the following Response, in toto, to the factual and legal allegations made in Complaint:
“The Respondent denies the allegations set out in the Complaint, but has decided nonetheless to stipulate to the transfer of the Domain Name, without admitting any liability or wrongdoing whatsoever.” See Resp. (June 2, 2017).
That is, Respondent has consented to transfer <outdoorsy.com> to Complainant.
However, after the initiation of this proceeding, GoDaddy.com, LLC placed a hold on Respondent’s account. Therefore, Respondent cannot transfer the disputed domain name while the proceeding is pending.
While Panel is empowered to order an immediate transfer of <outdoorsy.com>
without a traditional UDRP analysis for the sake of expediency, Panel has ruled that it is incumbent upon the integrity of the Uniform Doman Name Resolution Policy, to not do so in this case. Here, Respondent, in lieu of offering a blanket consent to transfer, has conditioned her consent upon an affirmative defense of denial of the allegations set out in the Complaint.
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So there exists a disconnect between the validity, if any, of the allegations and of the remedial aspects of a consent. The remedy should not be unhinged from the purported transgression; but rather, should squarely meet the proven elements, as a door meets its jambs.
Further, the Panel notes that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name, without a decision on the merits by the Panel. Here, the Panel also finds that the “consent-to-transfer” approach is a methodology for a possible cybersquatter to avoid a pattern of adverse findings against them. In Graebel Van Lines. Inc., v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the Panel (stating, “Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be analyzed along with the findings in accordance with the Policy.”)
For these reasons, the Panel has decided to analyze the case under the elements of the UDRP.
A. Complainant
Complainant, Outdoorsy Inc., is an e-commerce shared economy business headquartered in San Francisco, California, USA. In connection with this business, Complainant uses the OUTDOORSY mark to promote its goods and services. Complainant has rights in the OUTDOORSY mark based upon its
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registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,892,666, registered Jan. 26, 2016). See Compl., at Attached Annex C (Copies of Complainant’s trademark record with the USPTO). Respondent’s domain name, <outdoorsy.com> (registered Aug. 4, 1999), is identical to Complainant’s mark as it contains the mark in its entirety and only appends the generic top-level-domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by <outdoorsy.com> and Complainant has not authorized Respondent to register a domain name reflecting its mark. Respondent utilized a WHOIS privacy shield when registering <outdoorsy.com>. Respondent failed to use <outdoorsy.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactive website hosting pay-per-click advertising in competition with Complainant for the presumed benefit of Respondent. See Compl., at Attached Annex M.
Respondent registered and is using <outdoorsy.com> in bad faith. Respondent disrupts Complainant’s business through the use of an identical domain name to resolve to advertising in competition with Complainant. Respondent inactively holds an identical domain name with pay-per-click advertising in competition with Complainant for Respondent’s commercial gain. Respondent had actual notice of Complainant’s rights in the OUTDOORSY mark at the time Respondent registered <outdoorsy.com>—further evidence of Respondent’s bad faith per Policy ¶ 4(a)(iii).
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B. Respondent
Respondent steadfastly denies Complainant’s allegations but advances no argument of its own. Respondent further stipulates to the transfer of <outdoorsy.com> to the Complainant, “without admitting any liability or wrongdoing whatsoever.” See Resp. (June 2, 2017).
(1) The domain name <outdoorsy.com> 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.
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:
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(1) the domain name <outdoorsy.com> 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.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant asserts rights in the OUTDOORSY mark based upon its registration with the USPTO (Reg. No. 4,892,666, registered Jan. 26, 2016). See Compl., at Attached Annex C (Copies of Complainant’s registered wordmark in OUTDOORSY with the USPTO). Registration of a mark with a trademark authority such as the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). 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 Annex A, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore, finds Complainant has rights in the OUTDOORSY mark.
Next, Complainant argues Respondent’s domain name, <outdoorsy.com>, is identical to Complainant’s mark as it contains the mark in its entirety and only appends the gTLD “.com.” Where the only difference is the addition of a gTLD, previous panels have found the resulting domain names identical to the mark they encompass. See F.R. Burger & Associates, Inc. v. shanshan lin, FA
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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.”). Here, when the gTLD is removed we are left with Complainant’s mark. As such, the Panel finds that Respondent’s domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel, therefore, concludes that Respondent’s domain name of <outdoorsy.com> is identical or confusingly similar to a trademark in which Complainant has rights, pursuant to UDRP Policy ¶4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
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.”).
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Complainant has provided convincing arguments that Respondent is not commonly known by the disputed domain name. Where there is no information in the record to the contrary, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Respondent’s use of a WHOIS privacy service fosters a finding that Respondent is not commonly known by the disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The WHOIS privacy service was lifted at the commencement of this proceeding and the WHOIS information of record reveals “Laurel Michalek” as the registrant.
As such, the Panel finds that Respondent is not commonly known by
<outdoorsy.com> per Policy ¶ 4(c)(ii).
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Next, Complainant offers credible evidence through its Annexes that Respondent failed to use <outdoorsy.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactively held website hosting pay-per-click advertising in competition with Complainant for the presumed benefit of Respondent. See Compl., at Attached Annex M. Failure to make demonstrable preparations to use an identical domain name constitutes a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.
This 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).”). Use of an identical domain name to host pay-per-click advertising in competition with a complainant is behavior which indicates a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services 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 pursuant to Policy ¶ 4(c)(iii).”). This Panel therefore finds, that Respondent failed to use <outdoorsy.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
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In conclusion, Complainant has, made a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).
Respondent has subsequently failed to satisfy its burden to show that it does have rights or legitimate interests in the disputed domain. Rather, Respondent has merely categorically denied Complainant’s allegations, in pursuit of a consent decree, to transfer disputed domain name to Complainant, without the admission of any wrongdoing.
The Panel, therefore, concludes that Respondent lacks rights and legitimate interests, pursuant to UDRP Policy ¶4(a)(ii).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
The Panel is convinced, for the following reasons, that Respondent registered and used <outdoorsy.com> in bad faith, pursuant to UDRP ¶4(a)(iii).
Respondent registered the disputed domain name in October of 2016, subsequent to Complainant’s registration of its identical trademark with the USPTO on January 26, 2016. Panel has concluded, after a review of Complainant’s credible Attached Annexes, that Respondent registered the disputed domain <outdoorsy.com> with actual and constructive knowledge that the disputed domain was identical to Complainant’s OUTDOORSY mark. Complainant has offered convincing evidence that Respondent, Laurel Michalek, has acted as an agent of RV Share, a competitor of Complainant, in
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registering the disputed domain name. Complainant’s Attached Annex N reveals that Ms. Michalek is, at least acquainted, with the wife of the competitor’s owner, that is Rachel Jenney. Also, Complainant’s Attached Annex O shows that RV Share, owned by Mark Jenney, (husband of Rachel Jenney, see Attached Annex Q) offers identical services of shared RV’s, to those of Complainant.
Therefore, Panel is convinced that Respondent had actual notice of Complainant’s rights in the OUTDOORSY mark at the time Respondent’s registered <outdoorsy.com>. Actual notice of a complainant’s rights in a mark prior to registration is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). In the case at bar, Respondent’s domain name entirely appropriates Complainant’s mark and resolves to advertising in competition with Complainant. Respondent’s registration of the identical mark constitutes actual notice of Complainant’s rights in the mark, and therefore, is evidence of Respondent’s bad faith registration per Policy ¶ 4(a)(iii).
Panel has viewed Complainant’s Annex M “Screenshot of Website to Which Disputed Domain Resolves,” and is thus convinced that Respondent has used the disputed domain name in bad faith. This attached Annex M shows that Complainant’s business has been disrupted through the use of an identical domain name that resolves to pay-per-click advertising in competition with Complainant. Use of a disputed domain name
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to host pay-per-click hyperlinks evinces a finding of bad faith registration and use per Policy ¶ 4(b)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to competing websites. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).”). Here, the resolving website for <outdoorsy.com> hosts pay-per-click hyperlinks in competition with Complainant’s business. As such, the Panel finds compelling evidence of Respondent’s bad faith per Policy ¶ 4(b)(iii).
Complainant’s Attached Annex M shows that the disputed domain resolves only to a generic landing page, and is only being used passively. Respondent’s inactive holding of the disputed domain name prevents Complainant from registering the name reflecting its mark. When use of a disputed domain name will cause confusion as to the ownership of the domain, past panels have found evidence of bad faith per Policy ¶ 4(b)(iv). See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). In this case, Complainant credibly argues, that any use of the disputed domain name made by Respondent will mislead Internet users, seeking Complainant or Complainant’s business, and such users will become victims of initial interest confusion. As such, the Panel agrees with Complainant’s contentions and finds further evidence of Respondent’s bad faith.
The Panel, therefore, concludes that Respondent registered and used the domain name <outdoorsy.com> in bad faith, pursuant to Policy ¶4(a)(iii).
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Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <outdoorsy.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: June 22, 2017
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