Toast, Inc. v. Jared Isaacman / Harbortouch
Claim Number: FA2208002007428
Complainant is Toast, Inc. (“Complainant”), represented by Jeffrey J. Nein of Kegler, Brown, Hill, and Ritter Co., LPA, Ohio, USA. Respondent is Jared Isaacman / Harbortouch (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toastpos.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2022; the Forum received payment on August 5, 2022.
On August 8, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <toastpos.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 August 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2022 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@toastpos.com. Also on August 9, 2022, 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 August 31, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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
Complainant, Toast, Inc., operates as a cloud-based restaurant software company. It offers an all-in-one platform, including point of sale hardware, for restaurants to connect restaurant employees and operations with restaurant guests. Complainant claims trademark rights in the word TOAST, as well as in variations such as TOAST POS, TOAST TAB, and TOAST GO, through its various registrations with the United States Patent and Trademark Office (“USPTO”) (e.g.¸ Reg. No. 4,805,546, Registered on Sep. 1, 2015, filed Dec. 4, 2014). Complainant's website address is www.toasttab.com which it acquired on May 6, 2012. Respondent’s <toastpos.com> domain name fully incorporates the TOAST mark in its entirety and adds the descriptive acronym “pos” (meaning “point of sale”), as well as the “.com” generic top-level domain (“gTLD”). This domain name was originally created on Feb. 26, 2014 but it is believed that Respondent is not the original registrant and acquired the domain name sometime later.
Respondent lacks rights and legitimate interests in the <toastpos.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed any rights in the TOAST mark to Respondent. Respondent does not use the <toastpos.com> domain name for any bona fide offering of goods or services, nor does it make any legitimate noncommercial or fair use thereof. Rather, the disputed domain name has been inactively held the for half a decade but, recently, has been used to redirect users to the website of one of Complainant’s competitors.
Respondent registered and uses the <toastpos.com> domain name in bad faith. Respondent fully incorporated Complainant’s TOAST mark in the disputed domain name in order to attract users with a false impression of an association with Complainant. Further, Respondent’s use of a privacy service supports a finding of bad faith registration and use. Additionally, Respondent previously inactively held the disputed domain name and registered and uses the disputed domain name with constructive and actual knowledge of Complainant’s TOAST mark. Finally, as it is believed that Respondent acquired the disputed domain name more recently than its 2014 creation date, the timeframe in which to consider its bad faith should be the date of such acquisition.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant owns rights to the TOAST trademark and the <toastpos.com> domain name is confusingly similar thereto;
- Respondent has no rights or legitimate interests in the disputed domain name in part because it redirects users to the website of one of Complainant’s competitors;
- Although the disputed domain name was originally created in 2014, Respondent likely acquired it in 2021; and
- Using the disputed domain name to redirect users to the website of one of Complainant’s competitors is disruptive and creates a likelihood of confusion leading to a finding that Respondent registered and uses the 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the TOAST mark through its registration with the USPTO. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See H-D Michigan, LLC v. Private Whois Service, FA 1328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”) As Complainant has submitted copies of a number of its USPTO registration certificates, the Panel finds that Complainant has rights in the TOAST mark under Policy ¶ 4(a)(i).
Next, Complainant argues that the <toastpos.com> domain name is identical or confusingly similar to Complainant’s TOAST mark. Under Policy ¶ 4(a)(i), incorporating a mark in its entirety and adding a descriptive term often fails to sufficiently distinguish a disputed domain name from a protected mark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”) Further, the addition of the “.com” gTLD is irrelevant in determining whether a disputed domain name is identical or confusingly similar to a protected mark. See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”) The Panel notes that the <toastpos.com> domain name incorporates Complainant’s TOAST mark in whole and includes the descriptive acronym “pos” and the “.com” gTLD. The acronym “pos” is arguably descriptive as it stands for the phrase “point of sale” which relates to Complainant’s products. In light of the above, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant first contends that Respondent lacks rights or legitimate interests in the <toastpos.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the TOAST mark. It has become well accepted that the contents of a disputed domain name’s WHOIS record may inform consideration of whether a respondent is commonly known by a disputed domain name pursuant to Policy ¶ 4(c)(ii). See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.) In addition, a lack of authorization to use a complainant’s mark may indicate that a respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <toastpos.com> domain name, as revealed by the concerned Registrar, lists the registrant’s name as “Jared Isaacman” and its organization as “Harbortouch”. Complainant further asserts that it has not licensed or otherwise authorized Respondent to use the TOAST mark. The Respondent has not filed a Response or made any other submission in this case and so it does not dispute Complainant’s assertions or supplement the available evidence. Therefore, the Panel finds no grounds upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent does not use the <toastpos.com> domain name for any bona fide offering of goods or services, and that it does not make any legitimate non-commercial or fair use of the domain name. Failure to make an active use of a domain name generally does not qualify as either a bona fide offering, nor is it a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”) Further, use of domain name to redirect users to the website of a complainant’s competitior is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant submits archived screenshots of the website resolving from the disputed domain name which show that, for many years, it either resolved to a registrar parking page or to a notice stating that the domain name has been suspended. Thus, it asserts that Respondent inactively held the disputed domain name for at least five years. However, more recent screenshots are provided showing that the domain name currently redirects users to the website of one of Complainant’s competitors. Neither of these uses are a bona fide offering of goods or services or a legitimate noncommercial or fair use. As Complainant has made a prima facie showing which has not been rebutted by Respondent, upon a preponderance of the evidence the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name under either Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant argues that Respondent registered the <toastpos.com> domain name with constructive and actual knowledge of Complainant’s TOAST mark. Although the concept of constructive notice is generally disfavored under the Policy, actual knowledge may be presumed by looking at a respondent’s inclusion of a protected mark in a disputed domain name as well as the use it makes of the domain name. See 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.”) See also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where Respondent uses the disputed domain name to redirect users to a third party competitor of Complainant.) Complainant notes that “it would be quite the coincidence for Respondent to have registered a domain name with an exact match for Complainant’s name and trademark in connection with an acronym, ‘pos,’ that describes the exact product offered by Complainant under Complainant’s Mark.” It goes on to point out that the domain name has been used to redirect users to the website of a third-party company which produces products that compete with those offered by Complainant. Under these circumstances, the Panel finds it more likely than not that Respondent had actual knowledge of Complainant’s rights in the TOAST mark at the time that it acquired the disputed domain name.
A significant question in this case is whether the Respondent acquired the disputed domain name before a time when Complainant had demonstrable rights in its TOAST trademark. This invokes the familiar concept that, since Policy ¶ 4(a)(iii) requires proof of both bad faith registration and use, and that if a domain name was acquired by a respondent prior to the coming into existence of a complainant’s trademark rights, targeting of the mark, and thus bad faith registration, is impossible. See, e.g., Warner Bros. Entertainment Inc. v. Karl Allberg, FA 1881913 (Forum Feb. 19, 2020) (“Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint.”); World Wrestling Federation Entertainment, Inc. v. Michael Bosman, D99-0001 (WIPO Ja. 18, 2000) (“It is clear from the legislative history that ICANN intended that the complainant must establish not only bad faith registration, but also bad faith use.”) Complainant notes that, although its earliest trademark registration for the TOAST mark had not yet issued at the time that the disputed domain name was first created in early 2014, common law trademark rights had already accrued from Complainant’s incorporation in 2011, its pitching the TOAST business in early 2012, and its having gained publicity for its venture in late 2012.
Citing Policy ¶ 2, Complainant also goes to great lengths to assert the theory that domain name registrants can engage in bad faith by failing in their duty to avoid infringing upon trademarks that come into existence after the creation of a domain name but before a renewal of that domain name. It cites the decisions in Developmentex.com, Incorporated v. Manuel Schraner, FA 1755537 (Forum Nov. 27, 2017) and Suneva Medical, Inc. v. Servet Temir / Nokta France, FA 1425709 (Forum Apr. 12, 2012) for the proposition that “despite the respondent having registered its at-issue domain name in advance of complainant acquiring trademark rights, the fact that respondent capitalized on the complainant’s newly trademarked medical business by altering the domain name’s website to trade on complainant’s mark, suggests bad faith registration and use of the domain name. There as here, the respondent’s intentional abuse of complainant’s trademark rights for commercial gain discredits any notion that Policy ¶ 4(a)(iii) bad faith necessitates that there must be an existing trademark at the time an at-issue domain name is registered.” This line of argument originates with the concept of retroactive bad faith espoused in the well-known Mummygold[i] and Octogen[ii] decisions. The Panel found Complainant’s assertion quite surprising as “that line of reasoning has now been fundamentally disavowed (see, e.g., section 3.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).” Hike Private Limited v. Perfect Privacy LLC / Zcapital, D2017-0902 (WIPO Aug. 25, 2017). In essence, Policy ¶ 2 is a contractual obligation between the registrant and its registrar to which a complainant does not have privity and thus lacks grounds to assert a cause of action based thereon.
More surprising still, is Complainant’s engagement in assertion of this discredited legal theory when the same is completely unnecessary based on the evidence that Complainant has itself submitted. As Complainant correctly asserts, it is a well-accepted standard in UDRP cases to consider, for purposes of the bad faith registration analysis, the date on which a respondent acquired the disputed domain name rather than only the creation date. See DIRECTV, Inc. v. Toshi Amori, FA 1394254 (Forum July 28, 2011) (“The operative date is the date when Respondent acquired the disputed domain name (assuming the Respondent is not a successor in interest to the previous domain name owner).”); Celilo Group Media, Inc. v. Domain Administrator, D2010-1119 (WIPO Aug. 19, 2010) (“there has been a change of control amounting to a new registration for the purposes of this [bad faith] element of the Policy. What is significant is that the Domain Name was acquired on a date post-dating the coming into existence of the Complainant’s unregistered trade mark rights….”) Complainant has provided a detailed report of archived WHOIS records showing such things as the ownership, registrar, DNS, and dates of updates for the <toastpos.com> domain name. This shows that the domain name was originally registered under a privacy service at the eNom registrar in 2014. Around March 21, 2015 the domain name was still held at eNom but its registrant name was shown as “Adam Zell” with an address in “Cherry Hill, New Jersey” and its DNS records were changed. During this time, the domain name resolved to a pay-per-click page. In 2018 it was transferred to the registrar NameCheap, and then in 2020 it was moved to GoDaddy and the registrant organization was changed to “HugeDomains.com”. Then, around January 12, 2021, the WHOIS record shows that the domain name was moved to the registrar NameBright and was held by a “Nathan Hirshberg” of “Allentown, Pennsylvania”. It is at this time that the domain name first redirects users to the website of one of Complainant’s competitors. Around December 3, 2021, the domain name was moved to GoDaddy and the WHOIS record later became hidden by a privacy service. Against this backdrop, the Panel notes that the Registrar verification email, which was sent to the Forum after the Complaint was filed, identifies the Registrant as “Jared Isaacman” of “Harbortouch”, located in “Allentown, Pennsylvania”. While it appears to the Panel that there may be a connection between Nathan Hirshberg and Jared Isaacman as both list the same street address in Allentown, Pennsylvania, the archived WHOIS records submitted by Complainant do indicate that the present Respondent was not the original Registrant at the domain name’s 2014 creation. The most likely reality is that the domain name was acquired by Respondent very early in 2021. As Complainant’s trademark rights were, by this time, well established through registration and, as the disputed domain name first resolved to the website of Complainant’s competitor in early 2021, the Panel concludes, by a preponderance of the evidence, that Respondent’s acquisition creates a new “registration” and that the disputed domain name was registered by the present Respondent with knowledge of Complainant’s trademark and with the intent of targeting it in bad faith.
Moving on to the “use” component of Policy ¶ 4(a)(iii), Complainant contends that Respondent uses its <toastpos.com> domain name in bad faith based on its intent to disrupt Complainant’s business and its seeking of commercial gain based on confusion with the TOAST mark. A respondent’s redirection of a confusingly similar domain name to the website of a complainant’s competitor indicates bad faith registration and use pursuant to both Policy ¶ 4(b)(iii) and ¶ 4(b)(iv). See Google LLC v. Krombopulos Michael, FA 1998216 (Forum June 30, 2022) (“the disputed domain name is used to redirect users to a competing website. Use of a disputed domain name to resolve to a website offering competing services is disruptive and shows bad faith registration and use.”); Labelbox, Inc. v. Anthony Sarkis, FA 2007017 (Forum Aug. 22, 2022) (bad faith found where the disputed domain name was used to “misdirect them [users] to the Respondent’s website offering the services of Diffgram, a direct competitor of Labelbox, for Diffgram’s and the Respondent’s unfair commercial advantage.”) Complainant submits screenshots of the website to which the disputed domain name resolves and it displays the mark, products, and address of another company that is in the same point of sale field of business as Complainant. As Respondent has not filed a Response or made any other submission in this case, it has not sought to explain its actions or contest Complainant’s assertions. Based upon a preponderance of the evidence, the Panel finds that Respondent’s registration and use of the disputed domain name to be in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toastpos.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 6, 2022
[i] City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, D2009-0643 (WIPO July 3, 2009)
[ii] Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO Aug. 19, 2009)
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