Wedding Flea Market, LLC v. Edward Panian
Claim Number: FA1712001762373
Complainant is Wedding Flea Market, LLC (“Complainant”), represented by Donald J. McKay, Pennsylvania, USA. Respondent is Edward Panian (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <weddingfleamarket.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.
Flip Jan Claude Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 12, 2017; the Forum received payment on December 12, 2017.
On December 13, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <weddingfleamarket.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 December 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2018 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@weddingfleamarket.com. Also on December 14, 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 January 2, 2018.
On January 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Jan Claude Petillion 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
Complainant, Wedding Flea Market, LLC, contends to have rights based on its registration of the mark WEDDING FLEA MARKET with the United States Patent and Trademark Office ("USPTO") on September 26, 2017 under No. 5,298,449 in U.S. class 35. Complainant also contends to have rights based on its registration of the mark PITTSBURGH WEDDING FLEA MARKET with USPTO on September 28, 2017 under No. 5,153,013 in U.S. class 35. See Compl., at Attached Annexes 2 and 3. Complainant also argues to have common law rights in the mark from use dating back to the parent companies' formation in late 2012. See Compl., at Attached Annex 4. Complainant considers the disputed domain name <weddingfleamarket.com> to be identical to Complainant's WEDDING FLEA MARKET mark.
According to Complainant, Respondent lacks rights and legitimate interests in <weddingfleamarket.com>. Complainant argues that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use as the domain name resolves to websites which are not actively being used. See Compl., at Attached Annex 5. Further, Complainant submits that Respondent sole intention is to profit from the sale of the disputed domain name after an inquiry from Complainant to purchase the disputed domain name in good faith. See Compl., at Attached Annex 6. Lastly, Complainant contends that Respondent owns numerous domain name registrations, and cannot possibly have rights and legitimate interests in all of the domain names it registered. See Compl. At Attached Annex 7.
Finally, Complainant maintains that Respondent registered and uses the disputed domain name <weddingfleamarket.com> in bad faith. Complainant maintains that Respondent has "parked" the disputed domain name with the sole intent to profit from the sale of the disputed domain name, since Respondent offered to sell the disputed domain name for $7,500.00, considerably more than Respondent’s out-of-pocket costs associated with the domain name. See Compl. At Attached Annex 6. Finally, Complainant also maintains that Respondent, by registering hundreds of domain names using various email addresses, has engaged in a pattern of trademark abusive domain name registrations.
B. Respondent
In the Response of January 2, 2018, Respondent has put forward that, while the disputed domain name <weddingfleamarket.com> was registered by Respondent on November 18, 2013, Complainant has only recently acquired the WEDDING FLEA MARKET and PITTSBURGH WEDDING FLEA MARKET trademarks (i.e., on September 26, 2017, and September 28, 2017 respectively). Respondent also contends that Complainant fails to provide any evidence to indicate that Complainant has any rights in the marks since 2012.
Respondent states that he does have rights and legitimate interests in the disputed domain name. Respondent provides that he is a business and tech advisor, and board member of Rustic Wedding Chic, LLC, for which he has acquired the disputed domain name on November 18, 2013. Rustic Wedding Chic, LLC, was founded in 2008. Its various websites have since grown to some of the largest wedding and lifestyle websites. Respondent maintains that Complainant has acknowledged its position on the board of Rustic Wedding Chic, LLC, in an email of April 27, 2017. See Resp. At Attached Annex 2. Lastly, Respondent does not refute that he has registered numerous unrelated domain names. However, Respondent submits that it owns the domain names in connection with a different business, Technology AmericanTowns.com, which is unrelated to the issue in the current proceeding.
Finally, according to Respondent, the disputed domain name was not registered and is not being used in bad faith. Respondent claims that he had no intention of selling or renting the disputed domain name at the time of registration. Respondent puts forward that he acquired the disputed domain name together with another domain name for an upcoming wedding event of Rustic Wedding Chic, LLC, for which only the other domain name was eventually used. Further, Respondent indicates that since 2015, Complainant has contacted Respondent several times to inquire about purchasing the disputed domain name for Complainant's new business. See Resp. At Attached Annexes 4 and 5. Respondent further states that after Respondent declined to sell the disputed domain name, Respondent received an email by Complainant alerting Respondent of the recent registration of Complainant's WEDDING FLEA MARKET trademark, which Complainant threatened to enforce, if Respondent did not return with an adequate proposal for transaction. Respondent contends that it was only after Complainant began threatening Respondent that Respondent assented to propose an offer to sell the disputed domain name. Yet, Respondent argues that still maintained no desire to sell it. See Resp. At Attached Annex 6. After this communication, Respondent received an email from Complainant's counsel presenting him with a final ultimatum of either accepting an offer of $500.00 for the disputed domain name or facing a UDRP complaint based on Complainant's recently registered trademark. See Resp. At Attached Annex 7. Respondent states that he responded to this email by offering to transfer the disputed domain name for $7,500.00, which was based on GoDaddy’s fair market value for the domain <weddingmarket.com> as a “premium domain” and, as such, was not in excess of the out-of-pocket costs.
Additionally, on the basis of the above arguments, Respondent respectfully requests that the Panel make a finding of reverse domain-name hijacking.
Complainant, Wedding Flea Market, LLC, is an event management company organizing, promoting and conducting resale events for used wedding articles. In connection with this business, Complainant registered the WEDDING FLEA MARKET mark with the USPTO on September 26, 2017 under No. 5,298,449 in U.S. class 35, with a Date of First Use and a Date of First Use in Commerce on March 2017. Complainant also registered the PITTSBURGH WEDDING FLEA MARKET mark with USPTO on September 28, 2017 under No. 5153013 in U.S. class 35, with a Data of First Use and a Data of First Use in Commerce on January 2015. Complainant also claims to have common law rights in the mark from its use dating back to 2012. See Compl., at Attached Annexes 2 and 3.
Respondent registered the disputed domain name <weddingfleamarket.com> on November 18, 2013.
Respondent's disputed domain name does not resolve to any substantive content and is not actively used by Respondent.
Complainant first contacted Respondent to inquire about purchasing the disputed domain name in an email of May 19, 2015. In this email, Complainant proposed to acquire the disputed domain name for $75.00-$100.00. Responded did not respond to this proposal. See Resp. At Attached Annex 4. Complainant contacted Respondent again on April 17, 2017 with a second inquiry to obtain the transfer of the domain, offering to possibly add Complainant's domain name <weddingfleamarkets.com> to the arrangement. Respondent stated in his reply that he was not interested in selling the disputed domain name. See Resp. At Attached Annex 5. Later, on October 17, 2017, Complainant contacted Respondent again, alerting Respondent to the recent registration of Complainant's WEDDING FLEA MARKET trademark, which Complainant threatened to enforce if Respondent did not return with a realistic proposal for transaction. See Resp. At Attached Annex 6. Complainant’s threat was later reinforced by an email of Complainant's counsel on October 18, 2017, in which Respondent was given the option to either transfer the disputed domain name for $500.00 or face a UDRP complaint. Respondent answered to this email by stating that such a practice would constitute reverse domain name hijacking and that the disputed domain name can be acquired for $7,500.00. In an email of October 19, 2017, Complainant's counsel rejected Respondent's proposal of $7,500.00. See Resp. At Attached Annex 7.
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 shows to have rights in the WEDDING FLEA MARKET mark through registration of the mark with the USPTO (Reg. No. 5,298,449, registered September 26, 2017 in U.S. class 35) See Compl., at Attached 2. 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 also claims to hold common law rights in the WEDDING FLEA MARKET mark since 2012. To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark's having acquired secondary meaning.”). Complainant provides a screenshot of a <facebook.com> search, which shows that “Jodi Colella”, founder and CEO of Complainant’s business, created a Facebook group called "Pittsburgh Wedding Flea Market" on December 26, 2012. See Compl. At Attached Annex 4. This cannot be accepted as sufficient evidence for supporting assertions of acquired distinctiveness, as it does not demonstrate that Complainant's mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. See WIPO Overview 3.0, Section 1.3. In addition, the USPTO trademark registration of Complainant's WEDDING FLEA MARKET mark determined that the first use in commerce of the mark was only in March 2017. As a result, the Panel finds that Complainant has failed to establish that the mark has acquired a secondary meaning.
Complainant claims that Respondent's domain name <weddingfleamarket.com> is identical to Complainant's WEDDING FLEA MARKET mark. The top-level domain is usually considered to be irrelevant in assessing identity or confusing similarity (See Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Guo MengNi / GuoMengNi Guo / Guo GuoMengNi / 郭孟妮, FA 1747411 (Forum October 3, 2017) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).) As a result, the addition of the “.com,” gTLD in the disputed domain name can be disregarded for the finding of identity or confusing similarity. Respondent’s disputed domain name includes Complainant's WEDDING FLEA MARKET mark in its entirety. In view of the above, this Panel finds that Respondent’s domain name is identical to Complainant's WEDDING FLEA MARKET mark for the purposes of Policy ¶4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 August 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 September 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 is not using the disputed domain name <weddingfleamarket.com> in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent’s domain name resolves to an inactive or "parked" website which does not display any substantive content but appears to display sponsored content originating from the registrar. See Compl. At Attached Annex 5. Failure to make active use of an identical or confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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. 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).").
Although Respondent claims to have acquired the disputed domain name with the intent of using it for a specific project linked to a business activity similar to Complainant's and in connection with the dictionary meaning of the disputed domain name, namely a market for second-hand wedding articles, Respondent has not used, and did not establish any demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. See WIPO Overview 3.0, Section 2.10.1. As there is no content on the page to indicate that Respondent will make active use of the disputed domain name and Respondent has provided no evidence to suggest otherwise, the Panel concludes that Respondent has not used the domain name within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Additionally, Respondent does not appear to be commonly known by the disputed domain name. Where there is no evidence in the record indicating a respondent is commonly known by a disputed domain name, WHOIS information can substantiate a finding that a respondent is not commonly known by a disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum February 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 Buff Exteriors, LLC v. gregg buffington, FA 1691787 (Forum October 17, 2016) (holding that, when a respondent fails to submit additional evidence, the relevant WHOIS record may determine the name by which respondent is commonly known). WHOIS information associated with the disputed domain name identifies Respondent as Edward Panian, which does not appear to resemble the disputed domain name. There is no other evidence to suggest that Respondent is known by the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name. Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
In view of the foregoing, the Panel considers that Complainant has made out the second of the three elements that it must establish.
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. These factors are meant to be merely illustrative of bad faith, and Respondent's bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. 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).
Complainant claims that Respondent has "parked" the disputed domain name with the sole intent to profit from the sale of the disputed domain name <weddingfleamarket.com>, as Respondent offered to sell the disputed domain name for $7,500.00, considerably more than Respondent’s out-of-pocket costs associated with the domain name. Offering to sell an identical or confusingly similar domain name can evince bad faith registration and use per Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). However, it is evident from the prior communication between Complainant and Respondent that Respondent’s offer to sell the disputed domain name to Complainant was not made in bad faith. It was Complainant who initiated the discussions and Respondent only put forward the offer after Complainant and its counsel had presented an ultimatum to Respondent. See Resp. At Attached Annexes 4 to 7. A complainant initiating sale discussions for a domain name in which a respondent has a legitimate interest can refute a bad faith argument under Policy ¶ 4(b)(i). See Key II, Inc. v. Confino, Vico, FA 954029 (Forum June 5, 2007) (finding “that Respondent never approached Complainant with an offer to sell the name; rather the Complainant sought to purchase the name for $3,000 and Respondent said that it had valued the disputed domain name on its books at $50,000. Even if this statement was an implied counter-offer to sell the name to Complainant for $50,000, in connection with a showing of bad faith it is important to note that it was Complainant who initially approached Respondent about the sale.”); see also Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001) (“Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name”). From the various email communications which Respondent provides, it is clear that Respondent did not demonstrate a willingness to sell the disputed domain name.
Additionally, Complainant claims that Respondent engaged in a pattern of abusive domain name registrations. However, a general examination of the additional domain names registered by Respondent quickly reveals that it concerns generic or descriptive domain names, which do not prevent trademark owners from reflecting their marks in relevant domain names. See Compl. At Attached Annex 7. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis.").
Further, Complainant makes no contention as to Respondent having any knowledge of Complainant’s rights in its marks at the time of registration and thus registered and used the domain names in bad faith. While Respondent registered the disputed domain name on November 18, 2013, Complainant only acquired trademark rights in the WEDDING FLEA MARKET mark on September 26, 2017, without establishing any prior common law rights in the mark. See the Panel findings above under Policy ¶4(a)(i). Where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent. See WIPO Overview 3.0, Section 3.8.1. As a result, the Registrant could not have contemplated the Complainant's then non-existent right. There is no evidence that the Respondent registered the disputed domain name in bad faith. Any rights Complainant may have acquired in the mark since September 2017 were not in existence at the time of registration of the disputed domain name by Respondent.
For the foregoing reasons, the Panel finds that Complainant 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).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and requests a finding of reverse domain name hijacking. This is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
Rule 15(e) provides that "after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding".
Complainant and its counsel knew, or should have known, that there was no possible chance of proving bad faith registration and use, as Respondent has registered the disputed domain name <weddingfleamarket.com> several years before Complainant could assert any rights in its WEDDING FLEA MARKET mark. Complainant was clearly aware of this, as Complainant had contacted Respondent several times since May 2015 to acquire the disputed domain name. See Resp. At Attached Annex 4. It was only after two years of attempting and failing to purchase the disputed domain name and a subsequent trademark registration, in which Complainant threatened Respondent to sell the disputed domain name for well below the fair market value or face UDRP proceedings, that Complainant sought to hijack the disputed domain name from Respondent. See Resp. Annexes 7 & 9. As such, Complainant filed this action in an additional attempt to deprive Respondent, the rightful, registered holder of the disputed domain name, of its rights to use the disputed domain name.
For these reasons, Complainant knew or should have known that it was unable to prove that Respondent registered and is using the disputed domain name <weddingfleamarket.com> in bad faith.
The Panel therefore finds Reverse Domain Name Hijacking and declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <weddingfleamarket.com> domain name REMAIN WITH Respondent.
Flip Jan Claude Petillion, Panelist
Dated: January 19, 2018
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