Lumen Inc. v. Daniel Stewart
Claim Number: FA1501001602828
Complainant is Lumen Inc. (“Complainant”), represented by Larry Birnbaum, New Jersey, USA. Respondent is Daniel Stewart (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thelightbulbstore.com>, registered with WILD WEST DOMAINS, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically January 31, 2015; the Forum received payment January 31, 2015.
On February 2, 2015, WILD WEST DOMAINS, LLC confirmed by e-mail to the Forum that the <thelightbulbstore.com> domain name is registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the name. WILD WEST DOMAINS, LLC verified that Respondent is bound by the WILD WEST DOMAINS, LLC registration agreement and 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 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2015, 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@thelightbulbstore.com. Also on February 4, 2015, 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.
The Forum received a Response and determined it to be timely and complete February 24, 2015.
On March 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant's Contentions in this Proceeding:
Complainant owns THE LIGHTBULB STORE mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,189,954, registered August 14, 2012, filed Dec. 15, 2011). Complainant uses the mark for retail and wholesale store services featuring light bulbs. The <thelightbulbstore.com> domain name is identical to the mark.
Respondent has no right to the name as it was registered some 12 years ago but was never been used for a website, or to conduct business relating to light bulbs. Respondent is not known by the name “the light bulb store.” Further demonstrating Respondent’s lack of rights; Respondent tried to sell the disputed domain name to Complainant for an amount in excess of reasonable costs of registration and/or development.
Respondent registered the disputed domain name solely for the purpose of reselling it for an outrageous profit. Specifically, Respondent offered to sell the disputed domain name for $18,000.00.
Respondent's Contentions in this Proceeding:
Complainant does not hold a registered trademark for THE LIGHTBULB STORE. Complainant has rights only in the symbol, which is the phrase with a light bulb serving as the letter “I” in light and another bulb in the background. The trademark document specifically states: “No claim is made to the exclusive right to use ‘THE LIGHTBULB STORE’ apart from the mark as shown.” Irrespective, Respondent maintains, Respondent’s registration of the domain name predates Complainant’s USPTO registration.
Respondent urges purchase of the disputed domain name in good faith September 27, 2010. Respondent’s purchase of the disputed domain name was not targeted at Complainant.
The alleged mark THE LIGHTBULB STORE is generic in nature, and a business operating in Scottsdale, AZ, uses that name as well. Respondent purchased several domain names comprised of generic terms, including <theflashlightstore.com>, <theexitsignstore.com>, and <thebatterymart.com>. Respondent plans to develop these names for use in connection with Respondent’s electrical distribution business.
Respondent never attempted to sell the disputed domain name to Complainant. The purported offer to sell e-mail provided by Complainant regards: <lightbulbstore.com>, not Respondent’s <thelightbulbstore.com>.
Complainant established rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent showed no such rights to or legitimate interests in the mark
contained within the disputed domain name.
The disputed domain name is identical to Complainant’s protected mark.
Respondent registered and passively held the disputed domain name 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 Complainant to 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.
Identical to or Confusingly Similar:
Complainant claims to own THE LIGHTBULB STORE service mark through registration with the USPTO (Reg. No. 4,189,954, registered August 14, 2012, filed Dec. 15, 2011). The Panel finds that Complainant’s USPTO registration adequately demonstrates Complainant’s legal rights in the mark for purposes of Policy ¶ 4(a)(i) dating back to the December 15, 2011, filing date, despite the disclaimer of exclusive right to use the mark apart from the mark as shown. See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place); Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
While Complainant failed to make assertions regarding accrual of common law rights or the commercial success of its business under the THE LIGHTBULB STORE mark, the Panel notes that Complainant’s USPTO registration lists a first use in commerce date of January 15, 2009, relevant in light of Respondent’s domain name registration in September 2010. The Panel considers such self-reported evidence at the time of the application in a federal publicly-filed document sufficient to show both date of first use and the beginning date for continuous use and accretion of adequate secondary meaning in Complainant’s mark, absent proof to the contrary; and thus Complainant’s submission shows sufficient proof to support a finding of common law rights in the THE LIGHTBULB STORE mark, dating back as far as January 15, 2009, Complainant’s first use, because it permits the presumption of continuous use from that date. See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
Complainant notes that the <thelightbulbstore.com> domain name is identical to the mark. The disputed domain name differs from the THE LIGHTBULB STORE mark by omission of spacing and addition of the generic top-level domain (“gTLD”) “.com.” These alterations are inconsequential to the confusing similarity analysis; the Panel finds Respondent’s <thelightbulbstore.com> domain name effectively identical to the THE LIGHTBULB STORE mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
While Respondent contends that the <thelightbulbstore.com> domain name is comprised of common and generic or descriptive terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Respondent also contends that the disputed domain name is comprised of common and generic/descriptive terms and thus cannot be deemed to be either identical or confusingly similar to Complainant’s mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be considered under Policy ¶¶ 4(a)(ii).
Further, Respondent also contends that its disputed domain name was registered before Complainant’s alleged rights in the mark. However, because this argument as well is not applicable under Policy ¶ 4(a)(i) per se, the argument will be considered under Policy ¶ 4(a)(iii). See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)).
The Panel finds that Complainant established rights in the mark contained in its entirety within the dispute domain name that Respondent purchased. The Panel finds that this domain name is identical to this protected mark; Complainant satisfied the elements of ICANN Policy Policy ¶ 4(a)(i).
Rights to or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 (Nat. Arb. 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.”).
Regarding Policy ¶ 4(c)(ii), Complainant claims Respondent is not known by the name “the light bulb store.” The Panel notes that the WHOIS record identifies “Daniel Stewart” as registrant, and that Respondent does not rely on Policy ¶ 4(c)(ii) in rebutting this Complaint. Accordingly, the Panel agrees no basis exists to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant next argues that Respondent has no right to the disputed domain name as it was registered over 12 years ago and has never been used for a website, or to conduct business relating to light bulbs. The Panel notes that Complainant failed to provide evidence, such as screenshots, to corroborate this allegation; however, Respondent produced no evidence in the Response to counter the claim of passive holding and the Panel finds that in such circumstances Complainant’s allegation may be taken as true. The Panel finds Respondent’s inactive use or passive holding of the disputed domain name is demonstrative of Respondent’s lack or rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“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).”).
Complainant also claims that a finding of Respondent’s lack of rights is further supported by Respondent ‘s efforts to sell the disputed domain name to Complainant for an amount far in excess of any costs of registration or plan of use. To support this allegation Complainant submits a copy of e-mail correspondence between alleged agents of the parties, purporting to show Respondent’s willingness to sell the disputed domain name for the amount of $18,000.00. See Compl., at Attached Ex. III. Prior panels have held that a respondent’s willingness to sell a disputed domain name to the complainant for inflated costs suggests the respondent is without rights or legitimate interests in the name. See, e.g., George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
In this case, the Panel finds that the referenced e-mail correspondence to and from this particular Respondent and this particular Complainant about this particular domain name, supports findings that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The Panel further finds that Complainant made a prima facie case to support its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent purchased the domain name and it is established contract law that Respondent acquired only such rights as those held by the predecessor and such liability unless that was expressly contracted away. Respondent offers no proof of rights, transfer of rights, ownership, or disposition of liabilities. Respondent also defeats its argument in support of rights by its own argument that the alleged mark THE LIGHTBULB STORE is generic in nature. Respondent notes that a business operates in Scottsdale, Arizona, under the same name. Respondent explains that it purchased several domain names comprised of generic terms, including <theflashlightstore.com>, <theexitsignstore.com>, and <thebatterymart.com> and did so in connection with a plan to develop these names for use in connection with Respondent’s electrical distribution business.(Emphasis added.). If all are generic, who has any rights to them? The record is silent as to Respondent’s business or business plan or the cost of development to date in that effort. Exhibit D does not show such a plan, proposal, projection, cost analysis or any other proof to support the development cost of any such enterprise, especially not to the amount of $18,000.00. It consists of a page showing three or domain names held by Respondent without further information about why they are there or what is proposed. Respondent passively holds this domain name and the Panel presumes it is held to keep Complainant from using its own mark as fully as the Internet plan for such domain names allows a rightful owner See Resp., at Attached Ex. D.
The Panel finds Respondent has shown no rights to the <thelightbulbstore.com> domain name either by being commonly known by it or by bona fide use.
In response to Complainant’s allegation that it sought to sell the disputed domain name, Respondent argues that it never attempted to sell the disputed domain name to Complainant and never discussed the matter or authorized such discussions and then puts reliance on the use or not of the artile “the”. Respondent explains that the purported offer to sell e-mail provided by Complainant regards <lightbulbstore.com>, not Respondent’s <thelightbulbstore.com>. See Resp., at Attached Ex. C. Given the discrepancy, the Panel finds that the correspondence sufficiently shows an intent to sell the domain name, whether or not Exhibit C establishes that it is an exchange with Complainant’s representative. Intent to sell does not have to be specific to the Complainant to support a finding of no bona fide use and none has been shown.
The Panel finds that Complainant established rights and legitimate interests in the mark and that Respondent has shown no such rights or legitimate interests in the mark contained within the disputed domain name. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant claims that Respondent engaged in bad faith registration and use. Complainant argues, Respondent registered the disputed domain name solely for the purpose of reselling it for an outrageous profit. Specifically, Complainant points to an e-mail allegedly indicating Respondent’s offer to sell the disputed domain name to Complainant for $18,000.00. See Compl., at Attached Ex. III. Again, The document speaks for itself. See Also Exhibit C. The Panel finds such willingness to sell the disputed domain name for an excessive $18,000.00 without showing a plan or development costs to support the amount is sufficient, standing alone, to support a finding of Policy ¶ 4(b)(i) bad faith. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
The Panel also finds that Respondent passively held the disputed domain name, injecting this demand for $18,000.00 purchase price as a way of preventing Complainant from making the full use intended by Internet policy for rightful holders of a mark. This conduct further supports findings of bad faith registration and use pursuant to the Policy ¶ 4(a)(iii). See for example Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that [the contrary would be required] where the respondent [has not attempted to sell the domain name for profit] has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, (Emphasis added.).
The Panel recalls that Respondent claims it never attempted to sell the disputed domain name to this Complainant, and Respondent notes the purported offer to sell e-mail provided by Complainant regards <lightbulbstore.com>, not Respondent’s <thelightbulbstore.com> domain name. See Resp., at Attached Ex. C. The Panel finds the document speaks for itself and the Panel finds the disputed domain name to be identical to the mark.
The Panel notes that Respondent claims to have purchased the disputed domain name in good faith September 27, 2010, with no intention of targeting Complainant. See Compl., at Attached Ex. B. The Panel notes that it is established contract law that Respondent contracted not only for rights held by the predecessor; but also acquired liabilities, unless they were exclusively handled otherwise. Respondent has shown no exception to this established rule. Although Respondent’s purchase date of September 27, 2010, predates Complainant’s earliest demonstrated legal rights in the THE LIGHTBULB STORE mark, namely the December 15, 2011, filing date with the USPTO, the Panel found that Complainant’s rights in the mark dated back to the date represented to the federal government in the filing process as 2009, a date that is earlier in time than Respondent’s purchase of the disputed domain name and that therefore a finding of bad faith is not precluded. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark) (Emphasis added.).
The Panel finds Respondent registered and passively held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(b)(iii).
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thelightbulbstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 17, 2015
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