LiveOne Group, Ltd. v. Bradley Shende
Claim Number: FA1209001464882
Complainant is LiveOne Group, Ltd. (“Complainant”), represented by Matthew D. Kellam, Illinois, USA. Respondent is Bradley Shende (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crowdsurfing.com>, registered with Tucows, Inc.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2012; the National Arbitration Forum received payment on September 28, 2012.
On September 28, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <crowdsurfing.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 September 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2012 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@crowdsurfing.com. Also on September 28, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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. The Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and rules and principles of law that it deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in CROWDSURFING and alleges that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a social media company that uses the registered trademark CROWDSURFING (United States USPTO Trademark Reg. No. 4,046,361 filed June 23, 2010) in connection with its business.
2. The disputed domain name was registered on April 2002.
3. The domain name automatically redirects to <carsurfing.com> and to a webpage offering car sharing services.
4. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
5. Respondent offered to sell the disputed domain name to Complainant after Complainant approached Respondent.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Panel also finds the disputed domain name to be legally identical to Complainant’s trademark since it takes the trademark and merely adds the non-distinctive gTLD, “.com” (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Former decisions under this Policy have uniformly held that Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006)).
Absent a response, the Panel shall decide this administrative proceeding on the basis of Complainant's representations pursuant to paragraphs 5(e), 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 uncompelling (see Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000); 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.”)).
Finally, it has been observed by panelists in earlier decisions that there is a necessary connection between the elements of legitimate rights, on the one hand, and bad faith, on the other. In particular, if it can be seen that a respondent has rights in a domain name, then it is generally difficult to assimilate that with a conclusion that the respondent had acted in bad faith (see Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005); Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007)).
Paragraph 4(c) of the Policy sets out certain circumstances which if found by the Panel to be proved demonstrate a respondent’s rights or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii) of the Policy. Those sets of circumstances are not exhaustive and other instances of legitimate interests might be in evidence. The paragraph 4(c) circumstances are:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraph 4(c)(ii) has no possible application to the facts. The publicly available WhoIs information identifies Respondent as “Bradley Shende” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. Absent a Response there is no evidence that Respondent might otherwise have come to be known by the domain name. Moreover, there is no evidence that Respondent has any trademark rights.
Neither of paragraph 4(c)(i) or (iii) has an obvious connection to the facts of the matter however those scenarios are premised in one way or another on questions of bona fide or legitimate use of the domain name and it is to that broader issue which the Panel turns.
Complainant alleges that the domain name automatically diverts to another domain name also registered by Respondent, <carsurfing.com>, and to an associated website which offers car sharing services. Complainant argues that Respondent’s use of the disputed domain name to redirect Internet users to its own website for commercial gain is neither a bona fide or a legitimate use of the name under Paragraph 4(a)(ii) of the Policy. Further, Complainant asserts that Respondent lacks rights and legitimate interests because Respondent registered the disputed domain name with the intention to sell it to Complainant.
Having reviewed the available evidence the Panel makes the following observations.
First, Complainant’s business is new. Its USPTO trademark registration carries a first use in commerce date of April 7, 2011. The press coverage of Complainant’s business is from 2012 and in one place names Complainant as “one of 2012’s hottest start-ups”. On the evidence, Complainant’s only website is located at www.liveonegroup.com. Were it not for the Federal trademark registration of CROWDSURFING (which Panel notes incidentally was only recorded as assigned from its original registrant, Timothy Ganschow, to Complainant on August 12, 2012) and dependent only on the material intended to show public recognition of the Complainant’s business under the CROWDSURFING name, Panel would not support a finding of common law trademark rights.
Secondly, the expression “crowd surfing” has entered popular understanding more than a decade ago and on Panel’s own limited research, it already appears as a listed dictionary term.
Thirdly, of itself, Respondent’s car sharing business promoted at www.carsurfing.com seems entirely legitimate and has no likely association in business terms with Complainant’s enterprise. WhoIs records also show that the domain name <carsurfing.com> was first registered in 2004.
Fourthly, the Complaint includes a declaration made by the founder of Complainant’s business, Timothy Ganschow, which includes these statements:
“Between May and July of 2012, LiveOne attempted to purchase the
<crowdsurfing.com> domain name from a broker of BuyDomains. The broker of BuyDomains represented that the <crowdsurfing.com> domain name was valued at $8,377, but that the seller would be looking for an offer in the $6,000 range. … On July 18, 2012, LiveOne was informed that the <crowdsurfing.com> domain
name had been purchased. On August 21, LiveOne sent Mr. Shende a letter informing him of LiveOne's rights in the CROWDSURFING Trademark. The letter also offered to purchase the <crowdsurfing.com> domain name for the amount Mr. Shende paid for the domain name and any reasonable transfer expenses. In response to the August 21, 2012 letter, Mr. Shende contacted me. We have exchanged several emails and telephone calls in attempt to amicably resolve this matter. During our telephone call of September 25, 2012, Mr. Shende represented he would sell us the <crowdsurfing.com> domain name for $25,000.”
The Panel draws the following findings. There is no direct evidence in the Complaint of the fact that, or of the time when, Respondent acquired the disputed domain name. There is no evidence of the original domain name registrant in 2002. If the registration was still beneficially owned by the 2002 owner the Panel might dismiss the Complaint summarily. WhoIs data shows that the domain name records were updated on July 30, 2012 but in what way the Panel does not know. Nevertheless, based principally on the Ganschow declaration, Panel is on balance prepared to proceed on the footing that Respondent acquired the disputed domain name sometime in July 2012 and Panel will treat that time as the relevant time for any assessment of rights or legitimate interests.
Whilst the parties are both located in Canada, there is no compelling evidence that Respondent targeted Complainant’s trademark when it acquired the domain name in July 2012. Decisions under the Policy are now aligned on the principle that the existence, per se, of registered trademark rights does not put a respondent on constructive notice of those rights and Panel has already found that the Complaint does not support the existence of common law rights. Added to this matrix are the facts (a) that “crowd surfing” is a commonly understood dictionary term and that (b) there is at least an argument that the owner of the domain <carsurfing.com> and the owner of a business behind that domain might wish to acquire the “related” domain name <crowdsurfing.com>.
It follows that there is no cogent evidence to support a finding that Respondent registered the domain name in order to resell it to Complainant, as is alleged. The Ganschow Declaration is the narrative of a disappointed would-be purchaser which, for undisclosed reasons, failed to secure the domain name at (presumably) auction and which then turned its attention to Respondent in the hope of a second bid attempt to secure a name it desired. Disappointed a second time, it appears from the evidence to have then instructed it attorneys to issue a demand letter which relies on what Panel would describe as an optimistic extension of Complainant’s trademark rights but in any event has very little to do with the UDRP.
In short, based on the evidence presented, this Panel sees no clear indication that Respondent has acted in a predatory fashion and, to the contrary, is inclined to find that it has both rights (based on the ordinary meaning of the words, “crowd surfing”) and legitimate interests (based on its current business and domain name holding). Panel finds that Complainant has failed to make even a prima facie case under the second element of the Policy.
No findings required.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <crowdsurfing.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: November 5, 2012
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