Givkwik Inc. v. Josh Sapienza / JJSConcepts
Claim Number: FA1508001632228
Complainant is Givkwik Inc. (“Complainant”), represented by William R. Samuels, New York, USA. Respondent is Josh Sapienza / JJSConcepts (“Respondent”), South Dakota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <givequick.com> (“the disputed domain name”), registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 6, 2015; the Forum received payment on August 6, 2015.
On August 7, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <givequick.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 August 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@givequick.com. Also on August 11, 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 August 28, 2015.
On September 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nathalie Dreyfus 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the <givequick.com> domain name is confusingly similar to Complainant’s GIVKWIK IMPULSE PHILANTHROPY mark pursuant to Policy ¶ 4(a)(i). The disputed domain name alters the spelling of Complainant’s GIVKWIK mark, while still pronounced phonetically the same, removes the “IMPULSE PHILANTHROPY” portion of Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com.”
Regarding Policy ¶ 4(a)(ii), Respondent should be considered to have no rights or legitimate interests in respect to the disputed domain name. Respondent is not commonly known by the disputed domain name, as Respondent is not authorized or licensed to act or perform services on behalf of Complainant.
Respondent’s use of the disputed domain name has no connection with a bona fide offering of goods and services nor any connection with a legitimate interest. Respondent uses the <givequick.com> domain name to offer a competing website using a mark nearly identical to Complainant’s and to provide services nearly identical to those provided by Complainant.
Finally, and with regards to Policy ¶ 4(a)(iii), the <givequick.com> domain name should be considered as having been registered and is being used in bad faith. Respondent purchased the <givequick.com> domain name with the purpose of disrupting the business of its competitor, namely Complainant. Respondent’s registration and use of the GIVKWIK IMPULSE PHILANTHROPY domain name for the purpose of selling competing products and services is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). Additionally, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s GIVKWIK IMPULSE PHILANTHROPY mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s products and services, in violation of Policy ¶ 4(b)(iv). Finally, Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii).
B. Respondent
The <givequick.com> domain name was registered on February 13, 2009, and was available for sale at <buydomains.com>. Respondent purchased the disputed domain name on approximately April 3, 2014.
Regarding Policy ¶ 4(a)(i), Respondent contends that Complainant has chosen to use misspelled versions of commonly used words, and Complainant’s expectation, acknowledgement, and anticipation of the confusion with a word that is commonly and widely known only demonstrates Complainant’s awareness of their own mark’s unavoidable confusion.
With regards to Policy ¶ 4(a)(ii), Respondent asserts that it has never developed or launched a website service named “Givequick,” nor did Respondent provide a charitable giving service which enabled the acceptance and administering of monetary charitable contributions. Respondent was merely in the earliest planning stages of such a venture and had never actually launched its website, which was under construction and password protected. Respondent suspects that Complainant used programs to strip information via web scraping to break through Respondent’s privacy wall in order to initiate this complaint. Complainant’s actions are an attempt to intimidate and manipulate Respondent into surrendering the disputed domain name without compensation. Respondent’s contemplation of and planning for a charitable giving service does not constitute an actual service.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant Givkwik Inc., which was founded in 2009, accepts and administers monetary charitable contributions in addition to creating, developing, and maintaining software applications and a website <givkwik.com> to facilitate charitable donations.
Complainant owns federal trademark rights in the GIVKWIK IMPULSE PHILANTHROPY mark (e.g. Reg. No. 4,158,251, registered June 12, 2012) through the United States Patent and Trademark Office (“USPTO”). Since April 2009, Complainant has owned and used the URL <givkwik.com> to promote and provide its services using the Givkwik Platform.
Respondent bought the disputed domain name on April 3, 2014, which was available since February 11, 2010 on the website buydomains.com.
On September 23, 2014, Complainant sent a Cease-and-Desist letter to Respondent requesting to cease the use of the disputed domain name and to transfer it to Complainant.
In a letter dated of September 25, 2014, Respondent explained to Complainant that it had ceased the use of the disputed domain name. However, regarding the transfer of the disputed domain name, Respondent required Complainant to compensate Respondent’s expenses related to the purchase of the disputed domain name.
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 disputed 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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
Complainant Givkwik Inc. states that it accepts and administers monetary charitable contributions, in addition to creating, developing, and maintaining software applications and a website <givkwik.com> to facilitate charitable donations.
Complainant contends that it owns common law rights in the GIVKWIK mark dating back to April 2009.
Complainant asserts that it has provided various services, including accepting and administering monetary charitable contributions, provided downloadable software in the nature of a mobile application for facilitating charitable donations, developed computer application software for mobile devices for aggregating and allocating small charitable donations by individuals, and has acted as an application service provider in the field of information management to host computer application software for the purpose of facilitating charitable donations via computers, laptops, smartphones, handheld devices, and mobile electronic devices, and has continuously used the GIVKWIK mark in connection with those services.
Further, Complainant argues that it owns federal trademark rights in the GIVKWIK IMPULSE PHILANTHROPY mark (Reg. No. 4,158,251, first used April 30, 2009, filed March 16, 2010, registered June 12, 2012) through the USPTO.
Prior panels have found that registration of a mark with the USPTO is sufficient to establish rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that the <givequick.com> domain name is confusingly similar to Complainant’s GIVKWIK IMPULSE PHILANTHROPY mark. The disputed domain name alters the spelling of Complainant’s GIVKWIK mark, while still pronounced phonetically the same, removes the “IMPULSE PHILANTHROPY” portion of Complainant’s mark, and adds the gTLD “.com.” To intensify confusion, Complainant alleges that it has been using the GIVKWIK mark since 2009, and has filed a trademark application with the USPTO for the mark (Serial No. 86,658,461, filed June 10, 2015). Complainant asserts that its GIVKWIK mark is a purposeful misspelling of the words “GIVE” and “QUICK.”
Previous panels have found that differently-spelled versions of a complainant’s marks are confusingly similar, particularly when the resulting pronunciations are still the same. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Prior panels have also concluded that confusing similarity exists where a respondent removes a portion of a registered mark. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). Further, past panels have routinely determined that the “.com” gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that the <givequick.com> domain name is confusingly similar to Complainant’s GIVKWIK and GIVKWIK IMPULSE PHILANTHROPY marks under Policy ¶ 4(a)(i).
The Panel is reminded that 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 shifts to Respondent to show it does have 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 Policy ¶ 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.”).
Complainant asserts that Respondent should be considered to have no rights or legitimate interests in respect to the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name, as Respondent is not authorized or licensed to act or perform services on behalf of Complainant, pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s use of the disputed domain name has no connection with a bona fide offering of goods and services nor any connection with a legitimate interest pursuant to Policy ¶ 4(c)(i). According to Complainant, Respondent uses the <givequick.com> domain name to offer a competing website using a mark nearly identical to Complainant’s, and to provide services nearly identical to those provided by Complainant.
However, considering all the aforementioned arguments, the Panel finds that Complainant has not established a prima facie case in support of 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 Policy ¶ 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 states that it has never developed or launched a website service named “Givequick,” nor did Respondent provide a charitable giving service which enabled the acceptance and administering of monetary charitable contributions. Respondent insists that it was merely in the earliest planning states of such a venture and had never actually launched its website, which was under construction and password protected. Respondent suspects that Complainant used programs to strip information via web scraping to break through Respondent’s privacy wall in order to initiate this complaint. Respondent argues that Complainant’s actions are an attempt to intimidate and manipulate Respondent into surrendering the disputed domain name without compensation, and Respondent’s contemplation of and planning for a charitable giving service does not constitute an actual service.
Past panels have found rights and legitimate interests where a respondent has made preparations to use a disputed domain name in connection with a bona fide offering of goods or services. See Jolt Co. v. Digital Milk, Inc., D2001-0493 (WIPO Aug. 1, 2001) (holding that the respondent’s submission of an extensive and elaborate business plan demonstrating the respondent's preparation to use the domain name in connection with a bona fide offering of goods or services was sufficient to establish a legitimate interest in the disputed domain name).
Although it appears that the disputed domain name resolved to a website offering similar services to Complainant’s, it is not clear to the Panel as to how this information was obtained and proof is lacking to demonstrate that Respondent’s website was active and available to the public.
However, it is clear that Respondent has made adequate preparations to use the disputed domain name and uses it in connection to a bona fide offering of goods or services.
Therefore, the Panel finds that Respondent has rights in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Complainant argues that Respondent purchased the <givequick.com> domain name with the purpose of disrupting the business of its competitor, namely Complainant, and Respondent’s registration and use of the disputed domain name for the purpose of selling competing products and services is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). Respondent offers services for accepting and administering monetary charitable contributions in direct competition with identical services provided by Complainant.
Additionally, Complainant claims that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s GIVKWIK IMPULSE PHILANTHROPY mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s products and services, in violation of Policy ¶ 4(b)(iv). Complainant alleges that Respondent profits from misdirected Internet users that were seeking out Complainant’s official website.
Finally, Complainant asserts that Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). Complainant asserts that Respondent knew, or reasonably should have known, that Complainant’s services are branded under the GIVKWIK and GIVKWIK IMPULSE PHILANTHROPY marks, and that Complainant had protected rights in the marks.
Considering all the aforementioned allegations, the Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Indeed, the Panel finds that Complainant has not succeeded in proving that Respondent has registered or used the <givequick.com> domain name in bad faith with regards to the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that 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, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Further, the Panel having found that Respondent had rights in the <givequick.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Therefore, the Panel finds that Respondent has not registered nor is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
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 <givequick.com> domain name REMAIN WITH Respondent.
Nathalie Dreyfus, Panelist
Dated: September 14, 2015
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