DECISION

 

Impressons LLC v. Stanley Pace

Claim Number: FA1502001604045

 

PARTIES

Complainant is Impressons LLC (“Complainant”), represented by John K. Buche of Buche & Associates, P.C., California, USA.  Respondent is Stanley Pace (“Respondent”), represented by Howard Neu of Law Office of Howard Neu, P.A., Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bolter.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

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.

 

Fernando Triana, Esq. as Chair of the Panel

Debrett Lyons, Esq. as Co-Panelist

David Einhorn, Esq. as Co-Panelist

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 9, 2015; the Forum received payment on February 9, 2015.

 

On February 9, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the disputed domain name <bolter.com> is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the disputed domain name.  Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 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@bolter.com.  Also on February 12, 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.

 

A timely Response was received and determined to be complete on March 4, 2015 in accordance with the Forum's Supplemental Rule 7.

 

A timely Additional Submission was received from Complainant on March 9, 2015 in accordance with the Forum's Supplemental Rule 7.

 

A timely Additional Submission was received from Respondent on March 10, 2015 in accordance with the Forum's Supplemental Rule 7.

 

On March 4, 2015, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the Forum appointed Fernando Triana, Esq. as Chair of the Panel, Debrett Lyons, Esq. and David Einhorn, Esq. as Co-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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

The trademark BOLTER is used on or in connection with the sale of socks, T-shirts, tops and underwear. 

 

Complainant has registered the trademark BOLTER with the United States Patent and Trademark Office (Reg. No. 4,533,520, registered May 20, 2014), to identify “socks, T-shirts, tops and underwear” in international class 25. 

 

Complainant also has common law rights in the trademark BOLTER, as it has been in continuous public use since October 12, 2012. 

 

The disputed domain name is identical to the trademark  because it differs only by the addition of the generic top-level domain (“gTLD”) “.com.”

 

Respondent has no rights or legitimate interests in the disputed domain name. 

 

Respondent’s use of the disputed domain name has no connection with a bona fide offering of goods and services, as it resolves to a pay-per-click website. Respondent is failing to make active use of the domain name.

 

Respondent is not commonly known by the domain name, nor is Respondent in possession of licensing rights to use the trademark. 

 

Respondent has registered and used the domain name in bad faith. 

 

Respondent is offering the domain name for sale.  The disputed domain name is up for auction on GoDaddy.com and Sedo.com. Respondent has never used the disputed domain name and the purpose of its registration was to sell it.

 

Respondent has engaged in a pattern of bad faith registration and use. 

 

B. Respondent

 

Registration of the disputed domain name predates the trademark registration by more than a year.

 

Respondent is in the business of registering, leasing and selling domain names and has accumulated over 10,000 surnames for that purpose.

 

The pay-per-click advertisements do not include socks, t-shorts, tops or underwear, therefore, no confusion could be caused.

 

The disputed domain name is not identical or confusingly similar to the trademark because “Bolter” is generic and can be used as a surname or as a term to refer to “bolt guns.”

 

Respondent confirms that he is not commonly known by the disputed domain name and asserts that neither is Complainant.

 

Respondent claims it has rights or legitimate interests in the disputed domain name as a generic domain name reseller.

 

Respondent claims it has not registered or used the disputed domain name in bad faith, and reasserts the legitimacy of its business as a generic domain name reseller.

 

C. Additional Submissions

 

a.      Complainant’s additional submission

 

Complainant had common law rights in the trademark before the disputed domain name was registered.

 

The trademark has been used since October 12, 2012 on Amazon.com.

 

Some of the pay-per-click links redirect Internet users to Complainant’s competitors.

 

Respondent is engaging in bad faith by intending to commercially benefit from a likelihood of confusion.

 

b.      Respondent’s Additional submission

 

Respondent could not reasonably have known of Complainant or its trademark.

 

Respondent has never put any of his domain names up for auction, though they are listed as being available for sale at SEDO and GoDaddy.

 

Complainant has not established “secondary meaning” in its alleged common law trademark prior to registration of Respondent’s domain name.

 

DISCUSSION

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.

 

Registration and Use in Bad Faith

 

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(1)   Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(2)   Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(3)   Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(4)   By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.

 

The website to which the disputed domain name resolves makes it clear that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration.

 

When Complainant offered to buy the disputed domain name, Respondent requested a valuable consideration in excess of out-of-pocket costs directly related to the disputed domain name, as shown in the asking price started at USD$59,999 and ended at USD$99,999. Which Respondent confirms in his Response and his Additional Submission.

 

Nonetheless, Complainant failed to offer enough evidence to determine that the disputed domain name was also registered in bad faith.

 

The only evidence filed regarding use by Complainant of its trademark before the disputed domain name registration, are four invoices which can be found in Complainant’s additional submission. Those invoices are for the total amount of USD$90, which is not enough to determine common law rights regarding the trademark or to even allow the Panel to conclude that Respondent knew the trademark when registering the disputed domain name.

 

Furthermore, Complainant did not provide the Panel with any other element regarding registration in bad faith, such us, a documented previous relationship with Respondent.

 

Therefore, paragraph 4(a)(iii) of the Policy was not duly proven in the present case in respect of the disputed domain name. Since Complainant has not satisfied paragraph 4(a)(iii) of the Policy there is no need for the Panel to address paragraphs 4(a)(i) and 4(a)(ii) of the Policy[1].

 

DECISION

Having not established one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the disputed domain name <bolter.com> REMAIN WITH Respondent.

Fernando Triana, Esq.

Chair of the Panel

Debrett Lyons, Esq.                                                             David Einhorn, Esq.

Co-Panelist                                                                            Co-Panelist

 

 

Dated:  April 20, 2015

 

COLO 1308 0940 68454

4290210419552