Patrick Yarn Mill, Inc. v. Raymond Grimes / Headwaters Creative
Claim Number: FA1710001754526
Complainant is Patrick Yarn Mill, Inc. (“Complainant”), represented by Womble Carlyle Sandridge & Rice, LLP, Georgia, USA. Respondent is Raymond Grimes / Headwaters Creative (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <earthspunapparel.us>, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 18, 2017; the Forum received payment on October 18, 2017.
On October 20, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <earthspunapparel.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2017 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@earthspunapparel.us. Also on October 23, 2017, 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 November 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration 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, Patrick Yarn Mill, is a leading manufacturer of high performance industrial yarns. Complainant uses its EARTHSPUN mark to promote its products and services and has established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,005,161, registered Oct. 1, 1996). Respondent’s <earthspunapparel.us> is confusingly similar to Complainant’s mark because it appends the generic term “apparel” and the country code top-level domain “ccTLD” “.us” to the fully incorporated EARTHSPUN mark.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent does not have rights in a mark identical to the domain name. Further, Complainant has not licensed or otherwise authorized Respondent to use its EARTHSPUN mark in any fashion, and Respondent is not commonly known by the <earthspunapparel.us> domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, <earthspunapparel.us> resolves to an inactive website.
Respondent registered and is using the disputed domain name in bad faith. Respondent offered to transfer the domain name to Complainant for in excess of out-of-pocket costs. Currently, Respondent uses the confusingly similar domain name to resolve to an inactive website. Finally, as a former employee of Complainant’s, Respondent had actual knowledge of Complainant’s rights in the EARTHSPUN mark.
B. Respondent
Respondent failed to submit a response in this proceeding The Panel notes that the <earthspunapparel.us> domain name was registered on May 3, 2017.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 contends that it registered its EARTHSPUN mark with the USPTO (e.g. Reg. No. 2,005,161, registered Oct. 1, 1996). Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Therefore, the Panel holds that Complainant has rights in the EARTHSPUN mark.
Complainant asserts that Respondent’s <earthspunapparel.us> is confusingly similar to Complainant’s mark because it appends the generic term “apparel” and the ccTLD “.us” to the fully incorporated EARTHSPUN mark. The addition of a generic word and ccTLD do not negate confusing similarity between a mark and a disputed domain name. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). As such, the Panel holds that Respondent’s <earthspunapparel.us> is confusingly similar to Complainant’s mark.
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its EARTHSPUN mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Additionally, under Policy ¶ 4(c)(iii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ [4(c)(iii)]). The WHOIS information of record for <earthspunapparel.us> lists “Raymond Grimes” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <earthspunapparel.us> domain name.
The Panel further agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Complainant alleges that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent fails to make an active use of the domain name’s resolving website. Use of a domain name to resolve to an inactive, parked website is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Screenshots indicate that the <earthspunapparel.us> resolving website merely displays information about purchasing the domain from the domain name’s registrar. Therefore, the Panel holds that Respondent is not using the <earthspunapparel.us> domain name in connection with a bona fide offering of goods or services, and thus lacks rights and legitimate interests in the domain per Policy ¶¶ 4(c)(ii) or (iv).
Complainant has therefore also satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and is using the disputed domain name in bad faith because Respondent has offered to sell the domain name to Complainant for an amount in excess of out-of-pocket costs. Offers to sell a disputed domain name at an excessive price may be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)). Here, Complainant alleges that Respondent was formerly employed by Complainant as a Web Developer for twelve years. Complainant contends that Respondent and Complainant parted ways and entered into an agreement outlining their relationship and making it clear which entity owned which assets. Since June 21, 2007, Complainant has emailed and mailed Respondent indicating that pursuant to their agreement, Respondent was to relinquish control of all of Complainant’s websites, including all EARTHSPUN websites. By August 31, 2017, Respondent was still uncooperative with Complainant’s requests and sent Complainant an invoice for $9,350 for work unrelated to the domain name, but did not supply any evidence as to where the monetary demands originated. On September 16, 2017, Respondent still had not transferred the domains and offered $2,500 to “work on the domain.” As such, the Panel agrees that Respondent offered to transfer the domain name to Complainant for in excess of out-of-pocket costs and therefore used the domain name in bad faith.
Complainant alleges that Respondent’s bad faith is further evidenced by its failure to actively use the <earthspunapparel.us> resolving website. Pursuant to Policy ¶ 4(a)(iii), the failure to make an active use of a disputed domain name is evidence of bad faith registration and use. See VideoLink, Inc. v. Xantech Corporation, FA 1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Screenshots indicate that <earthspunapparel.us> resolves to a parked website that features content supplied by the domain name’s registrar. Therefore, the Panel holds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, as a former employee of Complainant’s, Respondent had actual knowledge of Complainant’s rights in the EARTHSPUN mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). Therefore, the Panel concludes that Respondent registered the domain name in bad faith due to Respondent’s actual knowledge of Complainant’s rights in the EARTHSPUN mark.
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <earthspunapparel.us> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: November 27, 2017
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