Eastbay, Inc. v. Page Howe et al.
Claim Number: FA1606001680990
Complainant: Eastbay, Inc. of New York, New York, United States of America.
Complainant Representative: Kelley Drye & Warren LLP of New York, New York, United States of America.
Respondent: hampton howe of manchester, United States of America.
Page Howe of Manchester, Tennessee, United States of America.
Page Howe of manchester, Tennessee, US.
REGISTRIES and REGISTRARS
Registries: XYZ.COM LLC
Registrars: Dynadot, 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 Examiner in this proceeding.
Bart Van Besien, as Examiner.
Complainant submitted: June 24, 2016
Commencement: June 24, 2016
Response Date: July 11, 2016
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of fact:
Complainant claims to be the owner of several trademarks “EASTBAY”.
Complainant has provided evidence of the following trademarks:
· US Word mark “EASTBAY”; registration number 1304300; registration date 6 November 1984; class 42;
· US Word mark “EASTBAY”; registration number 1962110; registration date 12 March1996; classes 18-22-25-28;
· US Word mark “EASTBAY.COM”; registration number 2970015; registration date 19 July 2005; class 35.
Complainant claims that it owns all rights, title and interest in and to the EASTBAY marks in the USA and other countries worldwide. Complainant claims that it uses its EASTBAY marks in commerce throughout the world.
Complainant claims that its EASTBAY marks have a strong reputation and are widely known and well-recognized in the United States and throughout the world. Complainant claims that the Respondent was aware of Complainant’s rights in the EASTBAY marks when registering the Disputed Domain Name.
Complainant claims that the trademark(s) “EASTBAY” has/have been registered with the TMCH (Trademark Clearinghouse).
Respondent registered the disputed domain name on 2 January 2015 and renewed the registration on 17 February 2016.
Respondent claims that the name “EAST BAY” refers to a geographical region in the US or to several geographical regions throughout the globe. Respondent claims that hundreds of companies are using the words “East Bay” in their domain name(s) to signify products or services offered to people in the East Bay area.
Respondent argues that the extension “.xyz” refers to generations X, Y and Z.
Respondent argues that it has made no effort to confuse the public with regard to the Complainant's brands or products, and that it has added no links to any items related to the Complainant’s registered trademarks.
Respondent contends that the Complaint was brought in an abuse of the URS process or contains material falsehoods.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant.
URS 1.2.6.1 (i) covers the domain name at issue in this case. The domain name consists of the Complainant’s trademark(s) paired with the generic top level domain “.xyz”.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Respondent.
Complainant did not convince the Examiner that the Registrant has no legitimate rights or interests in the disputed domain name. The word “EAST BAY” or “EASTBAY” may refer to (a) geographical region(s) as well as to the Complainant’s trademarks. The Examiner cannot exclude that the Respondent has legitimate rights or interests in the domain name. The Complainant has not demonstrated the second element of the URS by a standard of clear and convincing evidence.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith.
a. Registrant 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 documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site 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 Registrant’s web site or location or of a product or service on that web site or location.
Determined: Finding for Respondent
There is no evidence of any bad faith registration or bad faith use by the Respondent.
There is no evidence that the domain name was registered or acquired 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 the Complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name.
There is no evidence that the domain name was registered in order to prevent the Complainant from reflecting its marks in a corresponding domain name. Also, there is no evidence of a pattern of such conduct by the Respondent.
There is no evidence that the domain name was registered primarily for the purpose of disrupting the business of a competitor.
Finally, there is no evidence that the Respondent intentionally attempted to attract for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on that web site or location.
The Complainant has not demonstrated the third element of the URS by a standard of clear and convincing evidence.
The Respondent has alleged that the Complaint was brought in an abuse of the URS proceeding and that it contained material falsehoods.
After considering the submissions of both parties, the Examiner concludes that the Complaint was not brought in bad faith; that the Complaint was not brought primarily to harass the Respondent; and that the Complaint does not constitute an abuse of the URS proceeding.
After reviewing the parties’ submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.
<eastbay.xyz>
Bart Van Besien, Examiner
Dated: July 11, 2016
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