Membrain, LLC v. Eric Galen
Claim Number: FA1605001676843
Complainant is Membrain, LLC (“Complainant”), represented by Allen B. Grodsky of Grodsky & Olecki LLP, California, USA. Respondent is Eric Galen (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <membrainventures.com>, registered with GoDaddy.com, LLC.
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 Forum electronically on May 26, 2016; the Forum received payment on May 26, 2016.
On May 27, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <membrainventures.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 May 31, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 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@membrainventures.com. Also on May 31, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel 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 MEMBRAIN (the “trademark”) by reason of its registration of that term with the Unites States Patent & Trademarks Office (“USPTO”). It can be inferred from the Complaint when read as a whole that Complainant believes that the disputed domain name is confusingly similar to trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. In particular, Complainant asserts that Ken Hertz and Seth Lichtenstein are two of the “members” of Membrain LLC and are also partners of the law firm Hertz, Lichtenstein & Young LLP (the “law firm”). It is said that Respondent was employed by that law firm from July 10,
2013 to July 9, 2014. It is alleged that:
“in or around December 2013, Hertz, Lichtenstein and Galen discussed the
possibility of creating an entity to be called Membrain Ventures, LLC that would
incubate start up ventures and would be affiliated with Membrain, LLC. The plan
was that Membrain, LLC would enter into a license with Membrain Ventures for
the right to use MEMBRAIN as part of Membrain Ventures’ corporate name and
domain name. The negotiations fell apart and Membrain Ventures, LLC was
never formed.”
Complainant alleges that Respondent registered and used the disputed domain name in bad faith. Complainant states in one place that Respondent “was not, and has never been, a member or employee of Membrain” and in another that “[W]hile the above negotiations were occurring, [Respondent] secretly registered the Membrain Ventures domain name in his own name. No one at Membrain
authorized him to do this and Membrain did not even learn that he had done so
until after negotiations to form Membrain Ventures LLC had fallen apart. …
[Respondent] also secretly set up an “about.me” page for Membrain Ventures in which he lists clients of Membrain … making clear his attempt to trade off on Membrain’s name and goodwill.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
Paragraph 15(a) of the Rules instructs the 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."
That said, panels have regularly refused complaints which showed less a case of cybersquatting than a dispute between business partners incidentally involving a question as to the rightful ownership of a domain name.
The Complaint here does not make it clear to Panel in what capacity Respondent, described as “counsel” TO THE LAW FIRM, was involved in the plan to form Membrain Ventures LLC. The evidence merely shows that when Respondent was asked by Complainant to voluntarily transfer the domain name to Complainant, Respondent indicated that his co-operation would depend on Complainant’s willingness to first discuss other issues related to the company “we set up.”
Since no Response was filed, the Panel can make no more of the relationship between the parties and so must decide either that the Complaint relates to a matter outside the scope of the Policy (and so deny the Complainant) or decide the administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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 has, on balance, determined that the Policy should be applied.
As such, the factual findings pertinent to the decision in this case are that:
1. The trademark is the subject of USPTO Reg. No. 2,817,913, registered on February 24, 2004 and standing in the name of Complainant;
2. Complainant provides consultancy services by reference to the trademark;
3. Complainant operates a website at www.membrainllc.com which states, inter alia, “[w]e concept (sic), manage, and implement events and programs for some of the world’s most powerful brands and organizations.”
4. the disputed domain name was registered on August 29, 2013; and
5. there is no website at www.membrainventures.com and the domain name does not redirect Internet users elsewhere.
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 trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is sufficient to establish trademark rights. Since Complaint includes evidence of registration of the trademark with a national authority, the Complainant should be considered in this case to have trademark rights for the purposes of the Policy.
The top-level domain,“.com”, can be ignored for the purposes of comparison.[i] The disputed domain name takes the whole of the trademark and adds the word, “ventures”. Panel finds that this addition does not significantly alter the identity of the trademark which remains the recognizable element of the domain name. This is because (a) the word “ventures” is a dictionary word whereas the trademark is not[ii]; (b) the word “ventures” is commonly used in a commercial and business sense much in the same way as the words “capitol” or “enterprises” are so used; and (c) when used in combination with an invented term, such as “membrain”, it is apt to load that other term with trademark meaning.
Panel is satisfied that the disputed domain name is confusingly similar to the trademark and so Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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.
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.[iii]
The publicly available WHOIS information identifies “Eric Galen” as the registrant of the domain name. Accordingly, in the absence of a Response there is no prima facie evidence that Respondent might be known by the disputed domain name.
There is no evidence that Respondent has any trademark rights. The domain name does not resolve—directly or indirectly—to a website. The Complaint exhibits a webpage located at https://about.me/membrainventures which states that “Membrain Ventures helps brands, celebrities and entrepreneurs develop, fund and launch new ventures through a unique range of strategic and creative services” but there is no evidence linking that webpage with Respondent and nothing on that webpage that identifies Respondent.
As such, there is no evidence that Respondent is using the domain name and so no evidence of either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response there is nothing on which a claim to rights or interests in the domain name can rest and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
There is nothing in the evidence provided with the Complainant that might engage the operation of any of those four scenarios. Panel notes here that “about.me” is a personal web hosting platform from which registered users can link their (social networking or other) identities. Panel observes that paragraph 4(b)(iv) above might have deserved attention had the Complainant somehow linked the webpage at https://about.me/membrainventures with Respondent’s activities.
It follows that Complainant must then show, as separate matters, registration in bad faith and use in bad faith. Since there is no evidence of use by Respondent of the domain name provided with the Complaint, the Complaint necessarily fails[iv].
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 <membrainventures.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: July 1, 2016
[i] See PepsiCo, Inc. v. Shah, FA 103934 (Forum Mar. 4, 2002); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000))
[ii] At least, not as spelt.
[iii] See Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000).
[iv] See Loris Azzaro BV, SARL v. Asteri, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence.”).
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