Gryphon Rue Rower-Upjohn v. Tyler Calfee
Claim Number: FA1608001690408
Complainant is Gryphon Rue Rower-Upjohn (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Tyler Calfee (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gryphonrue.com>, registered with Wild West Domains, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 22, 2016; the Forum received payment on August 22, 2016.
On August 23, 2016, Wild West Domains, LLC confirmed by e-mail to the Forum that the <gryphonrue.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@gryphonrue.com. Also on August 23, 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 September 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant has common law rights in the GRYPHON RUE mark dating back to 1989. Respondent’s <gryphonrue.com> domain name is identical to the GRYPHON RUE mark because it wholly incorporates the mark.
ii) Respondent is not commonly known by the <gryphonrue.com> domain name. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to divert Internet users seeking Complainant to Respondent.
iii) Respondent registered the <gryphonrue.com> domain name through opportunistic bad faith by acquiring the domain name after Complainant inadvertently allowed the registration to lapse and with full knowledge of Complainant’s common law rights in the GRYPHON RUE mark. Respondent uses the <gryphonrue.com> domain name in bad faith because the resolving website hosts content formerly hosted by Complainant along with pay-per-click advertisements in an effort to divert Internet traffic away from Complainant.
B. Respondent
Respondent has failed to submit a formal Response. The Panel notes that Respondent acquired the <gryphonrue.com> domain name in early 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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.
In view of Respondent's failure to submit a response, the Panel shall decide this 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 is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant does not claim to own a registration for its GRYPHON RUE mark. However, panels have agreed that if a complainant can demonstrate having common law rights in a mark, that complainant can satisfy the requirements of Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Complainant claims to hold common law rights in the GRYPHON RUE mark, dating back to 1989 that it uses as a songwriter, producer, and curator. Complainant urges that while the GRYPHON RUE mark corresponds with its personal name, the mark has been used in commerce such that it can be recognized as a protected mark. In order for a complainant to have common law rights, it must demonstrate that the mark has acquired secondary meaning. Relevant evidence of secondary meaning can include use of the mark in commerce, media recognition, and ownership of a domain name identical to the mark. See McCarthy on Trademarks and Unfair Competition, § 13:1 (4th ed. 2002) (stating that the basic rules pertaining to the protection of personal names require actual proof of secondary meaning for protection); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004. Complainant’s rights were previously recognized in Klabzuba Oil & Gas, Inc. v. ross micheal, Claim Number: FA1505001619813.”). Complainant has provided the following evidence to demonstrate secondary meaning: Annex containing a summary of projects in which Complainant has used the GRYPHON RUE mark; Annex displaying the use of the mark; Annexes containing media sources describing Complainant and its use of the mark; Annex containing marketing materials in which Complainant has used the mark; Annex showing identification of Complainant by the GRYPHON RUE mark through video media; Annexes showing Complainant’s prior ownership and use of the <gryphonrue.com> domain name. As the Panel finds this evidence sufficient, it finds that Complainant holds common law rights in the GRYPHON RUE mark.
Complainant argues that Respondent’s <gryphonrue.com> domain name is identical to the GRYPHON RUE mark because it wholly incorporates the mark. The Panel notes that the domain differs from the mark only in that it removes the space between words of the mark and adds the generic top-level domain (“gTLD”) “.com.” As such, the Panel finds the <gryphonrue.com> domain name identical to the GRYPHON RUE mark. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”).
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 (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 UDRP ¶ 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 (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 is not commonly known by the <gryphonrue.com> domain name. The Panel notes that the available WHOIS information identifies “Tyler Calfee” as Registrant. As the Panel finds a lack of evidence to the contrary, it finds that Respondent is not commonly known by the <gryphonrue.com> domain name according to Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving <gryphonrue.com> domain name is used to divert Internet users seeking Complainant to Respondent. Complainant claims that the website was registered by Respondent after Complainant inadvertently allowed its registration to lapse, and that Respondent now hosts the same content as that previously hosted by Complainant, along with pay-per-click links. Complainant has provided screenshots of the resolving website, as well as screenshots of its own prior use of the website. As the Panel finds Complainant’s arguments and evidence sufficient, it finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Collazo, FA 144628 (Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name).
Complainant contends that Respondent uses the <gryphonrue.com> domain name in bad faith because the resolving website hosts content formerly hosted by Complainant along with pay-per-click advertisements in an effort to divert Internet traffic away from Complainant. Complainant has provided screenshots of the resolving website, as well as screenshots of its own prior use of the website. As the Panel finds this evidence sufficient, it finds that Respondent uses the <gryphonrue.com> domain name in bad faith according to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Complainant maintains that Respondent registered the <gryphonrue.com> domain name through opportunistic bad faith by acquiring the domain name after Complainant inadvertently allowed the registration to lapse. Complainant urges that it owned and controlled the domain name from January 17, 2011 until early 2016, at which point a miscommunication with the registrar resulted in an inadvertent failure to renew registration of the domain. Complainant claims that Respondent then acquired the domain name with knowledge of Complainant’s common law rights in the GRYPHON RUE mark. Complainant has provided prior and current WHOIS information as well as prior and current screenshots of the resolving website. As the Panel finds this sufficient to show that Respondent acquired the <gryphonrue.com> domain name through Complainant’s inadvertent failure to renew and/or with actual knowledge of Complainant’s common law rights in the GRYPHON RUE mark, it finds that Respondent registered the domain name in bad faith. See Avocent Huntsville Corp. v. Taro Yamada / Personal, FA1409001582613 (Forum Nov. 25, 2014) (holding that the respondent had engaged in opportunistic bad faith pursuant to policy ¶ 4(a)(iii), when it registered the disputed domain name immediately after the complainant mistakenly allowed it to expire); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gryphonrue.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 28, 2016
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