CloudCover IP, LLC v. Scott Buchanan
Claim Number: FA1604001669031
Complainant is CloudCover IP, LLC (“Complainant”), represented by Michael A. Bondi, of Moss & Barnett, Minnesota, USA. Respondent is Scott Buchanan (“Respondent”), represented by Adam Stevens, of Kirton McConkie, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cloudcover.com>, registered with Tucows Domains 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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2016; the Forum received payment on April 5, 2016.
On April 5, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <cloudcover.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 April 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2016 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@cloudcover.com. Also on April 11, 2016, 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 May 2, 2016.
On May 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant CloudCover IP, LLC owns U.S. Trademark Registration No. 4,045,622 (the “’622 registration”) for the mark CLOUDCOVER, as used in connection with insurance services. The registration issued on October 25, 2011, and alleges a date of first use of August 4, 2011. Complainant also owns a pending U.S. trademark application (Serial No. 86817673) for the mark CLOUDCOVER.
Complainant owns the domain name cloudcover.net., which is its primary website, as well as a host of other cloud-related domain names, such as cloudcover-worldwide.com, cloudcover.biz, and cloudcover.net.
Complainant alleges that the disputed domain name, cloudcover.com, is identical to the CLOUDCOVER mark. It further contends that since the registration of the disputed domain name in November 2002, there have only been parking pages posted at such site. According to Complainant, “Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use despite owning the domain name since 2002.”
Complainant asserts that Respondent has engaged in bad faith registration and use of the disputed domain name. Complainant contends that Respondent has offered to sell the disputed domain name in excess of out-of-pocket expenses and uses the domain name to resolve to a parking page. “Failure to actively use a domain name is evidence of bad faith registration and use…,” Complainant declares.
B. Respondent
Respondent concedes that the disputed domain name is identical to the CLOUDCOVER mark, with the addition of the top-level domain “.com.” However, Respondent asserts that Complainant has not proven that it has enforceable rights in the CLOUDCOVER trademark.
Respondent contends that the CLOUDCOVER mark is not inherently distinctive, noting that the mark CLOUD COVER is used by third parties on or in connection with a foliage spray, cloud computing services and wine. Respondent further argues that the term “cloud cover” has a generic meaning of “a mass of cloud covering all or most of the sky.” Respondent also indicates that “there is at least some question” as to whether Complainant’s registered trademark is valid based on an allegedly invalid assignment of the intent-to-use application that matured into the ‘622 registration’ from the original applicant, CloudCover, Ltd., to Complainant, CloudCover IP, LLC.
Respondent further asserts that “Complainant has provided nothing beyond unsupported assertions and a total lack of admissible evidence” with respect to the issue of “rights or legitimate interests.” Even if some weight is given to the allegations set forth in the Complaint, Respondent notes that “[p]revious panels have recognized that the use of a domain name to provide links related to common or generic terms embodied in the domain name (e.g., `cloud’ and `cover’ here) that have meanings independent of any connection with the complainant’s business, and where the links do not capitalize on the value of complainant’s trademarks, `constitutes a bona fide offering of services’.” Respondent submits that there is no evidence to show that any of the advertising pages found at the cloudcover.com parking page has any connection to Complainant.
With respect to the issue of “bad faith” registration and use, Complainant emphasizes that there can be no bad faith registration where the domain name registration occurred prior to the existence of a complainant’s trademark rights. Respondent notes that the disputed domain name was registered in November 2002, and that Complainant applied to register the CLOUDCOVER mark in 2007 and only used such mark beginning in August 2011.
Respondent contends that he was not aware of Complainant at the time he registered the cloudcover.com domain name and that he originally registered the domain name in anticipation of operating a website as part of a project with his brother but that his brother’s poor health has delayed Respondent’s ability to implement the project. Respondent indicates that Complainant has advanced no evidence to support the assertion that Respondent’s failure to actively use the domain name is evidence of bad faith registration and use and that the evidence submitted by Respondent contradicts such assertion. Respondent asserts that he “has never attempted to use the cloudcover.com domain name or any site hosted thereon to trade on or benefit from any goodwill associated with the asserted trademark rights of Complainant.”
Respondent further maintains that there is no evidence to support the assertion that he offered to sell the disputed domain name for a sum in excess of out-of-pocket expenses or that he ever offered to sell the domain name at all.
Respondent argues that Complainant’s bad-faith actions in relation to the disputed domain name bar the award of relief. Respondent notes that Complainant first contacted Respondent regarding the domain name in December 2010, prior to any use of the CLOUDCOVER mark by Complainant, and misrepresented the status of its then pending trademark application. According to Respondent, Complainant’s later contacted Respondent and falsely indicated that ICANN was taking action to begin the transfer of the disputed domain name.
Noting that five years have passed since the above-referenced communications, Respondent maintains that Complainant will not be damaged by Respondent’s continued ownership of the domain name in issue.
The Panel finds that the disputed domain name is identical to the CLOUDCOVER mark; that Complainant has rights in the CLOUDCOVER mark; and that the disputed domain name was not registered and is not being used 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 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.
The Panel concludes that the disputed domain name, cloudcover.com, is, for all intents and purposes, identical to the CLOUDCOVER trademark. The domain name incorporates the mark in its entirety, adding only the generic top-level domain “.com.” The addition of a top-level domain is insufficient to distinguish a domain name from a complainant’s trademark. See Amazon Technologies, Inc. v. Jeremy S. Moore, FA 1666264 (Forum April 25, 2016).
The Panel further concludes that Complainant has rights in the CLOUDCOVER trademark. The evidence establishes that Complainant has registered the CLOUDCOVER mark with the United States Patent and Trademark Office (PTO) and the consensus view is that, for purposes of a UDRP proceeding, registration with the PTO is sufficient to establish rights in a mark. See Intel Corp. v. Macare, FA660685 (Forum April 26, 2006); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview”) ¶1.1. The fact that there exist other U.S. registrations for the mark CLOUDCOVER does not defeat Complainant’s rights in the mark, as used by Complainant on or in connection with particular goods and/or services.[1]
In view of the Panel’s determination on the issue of “bad faith” registration and use (see below), it deems it unnecessary to reach a determination on the issue of “rights or legitimate interests.”
The Panel concludes that the requisite “bad faith” registration and use has not been established. As Respondent points out, the disputed domain name was registered in November 2002, well prior to any date Complainant may rely upon to establish rights in the CLOUDCOVER mark. As a general rule, under such circumstances, the registration of a domain name cannot have been in bad faith because the domain name registrant could not have contemplated the complainant’s then non-existent trademark rights. See WIPO Overview, ¶3.1 and cases referred to therein.
Further, there is no evidence that Respondent was aware of Complainant at the time he registered the disputed domain name. Respondent’s sworn affidavit states, at ¶3, that “When I registered the domain name cloudcover.com, I was unaware of the Complainant or any rights that the Complainant had, if any, in the name or trademark CLOUDCOVER.”
There is also no evidence that Respondent registered the disputed domain name primarily for the purpose of selling it to Complainant or to any party. While the disputed domain name resolves to a parking page, such evidence does not necessarily support a determination of bad faith registration and use. Moreover, Respondent has presented evidence negating any inference of bad faith from his failure to actively use the disputed domain name. In his affidavit, Respondent points out that he anticipated using the domain name to operate a website with his brother but that his brother’s health has delayed such plans.[2]
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <cloudcover.com> domain name REMAIN WITH Respondent.
Jeffrey M. Samuels, Panelist
Dated: May 18, 2016
[1] Respondent’s attack on the validity of the ‘622 registration’ based on an allegedly improper assignment of Complainant’s intent-to-use trademark application is better addressed in another forum where there is greater opportunity for development of a more complete record.
[2] In view of the Panel’s discussion on the issue of “bad faith” registration and use, there is no need to address Complainant’s equitable arguments relating to Complainant’s alleged bad-faith actions and unreasonable delay in bringing this proceeding.
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