Victor Alvarado D/B/A Active Rings v. Michael F Mann / Domain Asset Holdings, LLC
Claim Number: FA1802001772887
Complainant is Victor Alvarado D/B/A Active Rings (“Complainant”), represented by Steven L. Rinehart of Registered Patent Attorney, Utah, USA. Respondent is Michael F Mann / Domain Asset Holdings, LLC (“Respondent”), represented by Brian Leventhal of Brian H. Leventhal, Attorney at Law, P.C., Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <activerings.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2018; the Forum received payment on February 21, 2018«DateHardCopy».
On February 22, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <activerings.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 February 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 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@activerings.com. Also on February 23, 2018, 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 March 19, 2018.
Timely Additional Submissions were received from both Complainant and Respondent
On March 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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, Victor Alvarado D/B/A Active Rings, began selling flexible elastomeric wedding rings online in 2013 using the ACTIVE RINGS mark. Complainant established rights in the ACTIVE RINGS mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,776,153, registered Jul. 21, 2015). Complainant registered the disputed <activerings.com> domain name on December 1, 2013. However, Complainant inadvertently let the registration lapse in January 2018. Respondent’s <activerings.com> domain name is identical to Complainant’s ACTIVE RINGS mark because it merely eliminates the spacing between the terms and adds the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its ACTIVE RINGS mark in any fashion. Respondent is not using the <activerings.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to divert Internet users searching for Complainant to Respondent’s own website.
Respondent registered and is using the <activerings.com> domain name in bad faith. Respondent registered the domain name after Complainant inadvertently allowed the registration to lapse, and registered it for the purpose of reselling it to Complainant. Respondent attempts to disrupt Complainant’s business by diverting Internet users away from Complainant’s business to Respondent’s website. Further, Respondent attempts to create confusion between Complainant’s mark and the disputed domain name to generate Internet traffic and revenue. Finally, Respondent registered the disputed domain name with knowledge of Complainant’s rights in the ACTIVE RINGS mark.
B. Respondent
Respondent registered the <activerings.com> domain name on January 4, 2018.
Respondent has rights and legitimate interests in the disputed domain name.
Respondent is in the business of buying and selling domain names comprising descriptive and generic terms and combinations thereof and the domain name at issue is made up of generic or descriptive terms. Respondent uses the <activerings.com> domain name to redirect to a landing page located at <domainmarket.com>. The site displays the sale price of the disputed domain name, a means to purchase it, a phone number for DomainMarket, a search engine for browsing the premium domain names available for purchase on DomainMarket.com, links to information about DomainMarket, and other marketing material about domain names.
Respondent did not register the <activerings.com> in bad faith. Respondent did not register the domain name for the purpose of reselling it to the Complainant. Respondent never approached Complainant (or any of its competitors) about selling the disputed domain name, and the mere offering for sale does not establish that it was registered for the purpose of targeting Complainant or its Competitors. Complainant, however, contacted Respondent to inquire about purchasing the domain name.
Respondent was not aware of Complainant’s alleged rights in the ACTIVE RINGS mark at the time of registration, nor was the disputed domain name registered with an intent to profit from or otherwise abuse Complainant’s trademark rights. Rather, Respondent registered the disputed domain name (which was available to the public through GoDaddy.com) as part of its business model of buying and selling domain names consisting of combinations of descriptive and generic terms, just as it has done 213 other times (dating back to 2007) when it registered domain names that start with the word “active” and include one or more additional dictionary terms. The average list price of all such “active” domains is $10,600, with some priced at nearly $100,000.
C. Additional Submissions
In its Additional Submission, Complainant cites to eleven prior UDRP decisions against the Respondent, arguing that such decisions establish a “pattern of bad faith registration per Policy ¶ 4(b)(ii).
In Respondents’ Additional Submission. Respondent argues that eleven adverse decisions is not significant, since it has bought and sold over 350,000 domain names.
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 contends it established rights in the ACTIVE RINGS mark through registration with the USPTO (e.g., Reg. No. 4,776,153, registered Jul. 21, 2015). Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel concludes that Complainant has established rights in the ACTIVE RINGS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <activerings.com> domain name is identical to Complainant’s ACTIVE RINGS mark because it merely eliminates the spacing between the terms. The elimination of spacing does not negate confusing similarity between a disputed domain name and a mark. See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017). As such, the Panel holds that Respondent’s <activerings.com> domain name is identical to Complainant’s ACTIVE RINGS mark.
Complainant contends that Respondent has no rights or legitimate interests in the <activerings.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. 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 “Michael F Mann / Domain Asset Holdings, LLC” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the ACTIVE RINGS mark. Panels may use such assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1620789 (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). Complainant alleges, and Respondent does not refute, that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <activerings.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the <activerings.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant claims that Respondent uses the domain name to divert Internet users searching for Complainant to Respondent’s own website. Use of a confusingly similar domain name to redirect Internet users to a respondent’s website may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the domain name’s resolving webpage, which shows that Respondent offers the domain name for sale. Therefore, the Panel finds that Respondent used the <activerings.com> domain name to divert Internet users away from Complainant’s business to Respondent’s own website, failing to confer rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Respondent argues that it has a legitimate business reselling domain names. While this may indeed be so, Respondent does not have the right to sell a domain name containing another’s registered trademark on the Principal Register. See Blue Ridge Fiberboard v. Domain Administration/Domain Asset Holdings, FA1661150 (Forum March 29, 2016).
Thus, Complainant has also satisfied Policy ¶¶ 4(a)(ii).
Complainant claims that Respondent registered the <activerings.com> domain name for the purpose of reselling it to Complainant or its competitors. Registering a domain name similar to a registered trademark for the purpose of reselling it can evince bad faith registration under Policy ¶ 4(b)(i). Complainant provides a screenshot of the resolving webpage, which only indicates that the domain name is for sale for $19,888. Respondent’s offering of a domain identical to a registered trademark constitute evidence of bad faith registration under Policy
¶ 4(b)(i).
Additionally, Complainant argues that Respondent registered and uses the <activerings.com> domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name for commercial gain. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). There does not appear to be any substantive material on the resolving webpage aside from the offering for sale. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant claims that Respondent registered the domain name after Complainant inadvertently allowed the registration to lapse in January 2018. A complainant may argue that it previously owned a domain name currently owned by a respondent to show bad faith on the part of respondent. See John Dilks v. PRIVACY ADMINISTRATOR / ANONYMIZE, INC., FA1623023 (Forum July 10, 2015) (Where the complainant was the former owner of the domain name, this raises a rebuttable presumption of bad faith registration). Accordingly, the Panel finds that Complainant owned the domain name prior to Respondent obtaining the domain name, which is indicative of bad faith registration under Policy
¶ 4(a)(iii).
For the above reasons, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <activerings.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 5, 2018
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