Revelry Partners, LLC v. Clay Eiland / Coffee Eiland
Claim Number: FA1803001774741
Complainant is Revelry Partners, LLC (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson, P.C., Minnesota, USA. Respondent is Clay Eiland / Coffee Eiland (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ascensioncoffee.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Bruce E. Meyerson, Nicholas J.T. Smith and Calvin A. Hamilton, Chair, as Panelists.
Complainant submitted a Complaint to the Forum electronically on March 6, 2018; the Forum received payment on March 6, 2018.
On March 7, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ascensioncoffee.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 March 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 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@ascensioncoffee.com. Also, on March 9, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 6, 2018, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Bruce E. Meyerson, Nicholas J.T. Smith and Calvin A. Hamilton, Chair, as Panelists.
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 shall 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
Since 2012, Complainant has owned and operated a coffee and wine bar under the ASCENSION and ASCENSION COFFEE trademarks with four locations in the Dallas metropolitan region. In that time, the ASCENSION branded cafes have garnered considerable praise, receiving hundreds of four- and five-star reviews on Yelp, Facebook, and a host of other websites, and being the subject of a number of unsolicited newspaper articles. See Compl. Annex 3. Complainant has rights in the ASCENSION mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,571,576, registered July 22, 2014). See Compl. Annex 4. Complainant also has common law rights in the ASCENSION COFFEE mark, as Complainant has used the name ASCENSION COFFEE extensively on business listings, websites, social media pages, in marketing and communications materials, and even on a self-published book, entitled “Ascension Around the World,” which details Complainant’s exhaustive efforts to source sustainable, responsible, top-quality coffee. See Compl. Annexes 3 & 8. Respondent’s <ascensioncoffee.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s marks in their entirety and add the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <ascensioncoffee.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the at-issue domain name to redirect users to <eilandcoffee.com>, where Respondent sells competing coffee goods and services. See Compl. Annex 9.
Respondent registered and uses the <ascensioncoffee.com> domain name in bad faith. Currently, Respondent uses the domain name to lure Complainant’s would-be customers away to Respondent’s competing business for its own commercial gain. See Compl. Annex 9. Further, Respondent previously passively held the domain name without making any use of the disputed domain name. See Compl. Annex 9. Additionally, while Respondent has remained the owner of the domain name throughout its registration, Complainant and Respondent previously had an amicable business relationship, and the at-issue domain name was used to advertise for the ASCENSION and ASCENSION COFFEE products and services for approximately one year. See Compl. Annex 9. Finally, Respondent was well aware of Complainant at the time it re-registered the domain name after allowing the registration to lapse, as the parties had an agreement that Complainant would own the <ascensioncoffee.com> domain name and the parties had numerous communications between June 2014 and October 2017. See Compl. Annex 2.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the <ascensioncoffee.com> domain name on November 11, 2010. See Compl. Annex 2.
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.
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 has rights in the ASCENSION mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,571,576, registered July 22, 2014). See Compl. Annex 4. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of 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 Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Accordingly, the Panel finds that Complainant has established rights in the ASCENSION mark for the purposes of Policy ¶ 4(a)(i).
Complainant also claims it holds common law rights in the ASCENSION COFFEE mark and does not currently hold a trademark registration for that mark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).
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 claims to have used the name ASCENSION COFFEE extensively on business listings, websites, social media pages, in marketing and communications materials, and even on a self-published book, entitled “Ascension Around the World,” which details Complainant’s exhaustive efforts to source sustainable, responsible, top-quality coffee. The record supports Complainant’s contentions. See Compl. Annexes 3 & 8.
Based on the record, the Panel finds that Complainant does hold common law rights in the ASCENSION COFFEE mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <ascensioncoffee.com> domain name is identical or confusingly similar to Complainant’s marks as it contains Complainant’s marks in their entirety and add the gTLD “.com.” The Panel notes that although the Complainant does not specify this, the domain name consists of the ASCENSION mark and adds the term COFFEE along with the gTLD “.com,” and also is identical to the ASCENSION COFFEE mark by only adding the gTLD “.com” to the fully incorporated mark. Either of the changes to a complainant’s marks have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 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.”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Panel finds that the <ascensioncoffee.com> domain name is confusingly similar to the ASCENSION mark, or identical to the ASCENSION COFFEE mark, under Policy ¶4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <ascensioncoffee.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 “Clay Eiland / Coffee Eiland” as the registrant. See Compl. Annex 2. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the ASCENSION or ASCENSION COFFEE marks. These assertions, absent a response from Respondent in this case, serve as prima facie evidence that Respondent is not commonly known by the 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).
Complainant alleges that Respondent has never been known by the domain name prior to its registration, nor has Complainant given Respondent permission to use the mark in any manner.
Accordingly, the Panel agrees that Respondent is not commonly known by the <ascensioncoffee.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <ascensioncoffee.com> domain name to redirect users to the <eilandcoffee.com> domain name, where Respondent sells competing coffee goods and services. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant generally fails to confer rights and legitimate interests in a domain name under Policy ¶¶ 4(c)(i) and (iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use).
Complainant provides a screenshot of the current resolving webpage, which displays the words “Eiland Coffee Roasters” and does appear to offer coffee related services. See Compl. Annex 9.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
The Panel, in light of the record, finds that Respondent uses the domain name to offer competing goods and services, failing to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <ascensioncoffee.com> domain name in bad faith by luring Complainant’s would-be customers away to Respondent’s competing business for its own commercial gain. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evidence bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
As mentioned previously, Complainant provides a screenshot of the current resolving webpage, which displays the words “Eiland Coffee Roasters” and does appear to offer coffee related services. See Compl. Annex 9.
Additionally, Complainant claims that Respondent previously passively held the domain name without making any use of the resolving webpage. Inactively holding a confusingly similar domain name can evidence bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant provides screenshots of the previous resolving webpages, which shows a blank webpage on January 1, 2013, and displayed the message “Error: Page cannot be displayed” on May 17, 2014. See Compl. Annex 9.
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the ASCENSION and ASCENSION COFFEE marks at the time Respondent re-registered the <ascensioncoffee.com> domain name after allowing the registration to lapse. Actual knowledge of a complainant's rights in a mark when reregistering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Houlberg Dev. v. Adnet Int’l, FA 95698 (Forum Oct. 27, 2000) (holding that as the respondent had actual knowledge of the complainant’s asserted rights in "Retail Engine" as a trademark before it renewed the domain name, the domain name was renewed in violation of ICANN Policy ¶ 2(b) and hence in bad faith).
Complainant contends that Respondent’s actual knowledge is corroborated by the fact that the parties had an agreement that Complainant would own the <ascensioncoffee.com> domain name and the parties had numerous communications between June 2014 and October 2017. Actual knowledge of a complainant's rights in a mark when reregistering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Houlberg Dev. v. Adnet Int’l, FA 95698 (Forum Oct. 27, 2000) (holding that as the respondent had actual knowledge of the complainant’s asserted rights in "Retail Engine" as a trademark before it renewed the domain name, the domain name was renewed in violation of ICANN Policy ¶ 2(b) and hence in bad faith).
The problem with Complainant’s position is that Respondent’s registration of the <ascensioncoffee.com> domain name predates Complainant’s first claimed rights in the ASCENSION and/or ASCENSION COFFEE marks. Consequently, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
Complainant raised the argument that Respondent re-registered the Domain Name upon its expiry in 2017, and that this re-registration amounted to registration in bad faith. The Panel inquired about the renewal of the domain name. The Registrar, Go Daddy.com LLC, was asked to provide the factual circumstances surrounding the renewal or re-registration of the domain name by Respondent. The Registrar stated that:
“A review of ASCENSIONCOFFEE.COM shows that the domain was auto-renewed on December 8, 2017 per the settings in the account.”
Based on the Registrar’s response, it would seem that the characteristics of the account allowed for an automatic renewal upon expiration. The Panel understands therefore, that the renewal does not constitute a new registration, rather a continuation of the original registration.
In the opinion of this Panel, the renewal of the domain name as described by Go Daddy.com LLC constitutes satisfactory evidence of an unbroken chain of possession. The Domain Name was registered on November 11, 2010, prior to any use by Complainant of either the ASCENSION or ASCENSION COFFEE marks. As such it was not registered in bad faith. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
While Complainant raises the existence of an oral agreement or understanding between the parties to transfer the Domain Name from the Respondent, Complainant provides no evidence of such agreement. Mere assertions by Complainant of such an agreement cannot satisfy the requisite burden of proof. In any case, the existence of an agreement has no relevance to the question of whether the Domain name was registered in bad faith in 2010, when Complainant has conceded that it had not used its mark in any way.
After a review of the record, the Panel finds that Respondent did not register the disputed domain name in bad faith because the Domain Name was registered prior to any use of the Complainant’s ASCENSION and/or ASCENSION COFFEE marks.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <ascensioncoffee.com> domain name REMAIN WITH Respondent.
Calvin A. Hamilton, Chair,
and Nicholas J.T. Smith, majority opinion
Hon. Bruce E. Myerson, Esq. dissenting opinion
Panelists
Dated: April 26, 2018
The Panel correctly determined Complainant has trademark and common law rights for the ASCENSION COFFEE mark and that the <ascensioncoffee.com> domain name is confusingly similar to Complainant’s mark. The Panel also correctly determined Respondent is not commonly known by the domain name and Respondent has failed to use the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Where the Panel went astray, in my opinion, is in its conclusion Respondent did not act in bad faith.[i] Essential to the Panel’s determination is its rejection of Complainant’s uncontradicted assertion that Complainant’s owner and Respondent agreed to transfer the domain name to Complainant. In the context of the undisputed record, including the relationship of the parties over several years, the Panel erred in refusing to accept Complainant’s statement.
These are the uncontradicted facts.
1. Respondent registered the domain name in 2010.
2. In 2011 Complainant’s owner and Respondent met and worked together to develop coffee brewing profiles and techniques.
3. In 2012, Complainant requested permission to use the name “Ascension Coffee” for Complainant’s business. Respondent consented.
4. Since 2012, Complainant has owned and operated a coffee and wine bar under trademarks ASCENSION® and ASCENSION COFFEE™ with four locations in the Dallas metropolitan region.
5. After Respondent initially registered the domain name, it sat dormant for years until Respondent transferred control of the website to Complainant, at which point it functioned as a website for Complainant’s ASCENSION COFFEE brand.
6. In reliance on representations from Respondent, Complainant invested considerable time, energy, and resources to build the ASCENSION and ASCENSION COFFEE brands. It adopted the ASCENSION and ASCENSION COFFEE names for the café, and subsequently secured two federal trademark registrations for ASCENSION .
7. Complainant uses the name ASCENSION COFFEE extensively on business listings, websites, social media pages, in marketing and communications materials, and even on a self-published book, entitled Ascension Around the World, which details Complainant’s exhaustive efforts to source sustainable, responsible, top quality coffee.
8. Complainant paid the domain name registration fee for five years of usage.
9. In mid-2014, Complainant’s owner and Respondent had a falling out. For some time, they had discussed forming a joint venture for a separate coffee roasting operation. However, the plans never materialized, and the relationship between the parties deteriorated.
10. Around June 2014, Respondent blocked Complainant’s access to the domain name. Thereafter, Respondent modified the website to redirect Internet users to his directly competing business, Eiland Coffee Roasters.
11. Respondent has offered no explanation to explain this conduct.
Giving consideration to the entire record, it is apparent Complainant’s unrefuted statement that Respondent agreed to transfer the domain name to Complainant must be accepted as true. Indeed, in the absence of a response, the “Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.” Advance Magazine Publishers Inc. d/b/a Conde Nast Publications v. NOLDC, Inc., Case No. D2009-0802 (WIPO Aug. 1, 2009).
There being nothing in record that contradicts Complainant’s statement that Respondent consented to transfer the domain name, I would enforce the undisputed agreement and transfer the <ascensioncoffee.com> domain name to Complainant. The Panel’s reliance on the technical point regarding the renewal of the domain name registration, albeit correct, results in a needless injustice in this case, made unnecessary because of the uncontradicted agreement by the parties to transfer the domain name to Complainant.
Bruce Meyerson
[i] The Complaint presents the alternative argument of retroactive bad faith. The Panel’s decision does not address that issue.
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