Andrew Hopkins v. Robert Grimm / 513 Ventures
Claim Number: FA2306002047775
Complainant is Andrew Hopkins (“Complainant”), represented by Lucas S. Michels of Ironmark Law Group, PLLC, Washington, USA. Respondent is Robert Grimm / 513 Ventures (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <synthetix5urine.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 Forum electronically on June 6, 2023; Forum received payment on June 6, 2023.
On June 7, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <synthetix5urine.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 June 8, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2023 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@synthetix5urine.com. Also on June 8, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2023, 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 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, 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 S5 SYNTHETIX5. It holds a national registration for that trademark and asserts that the domain name is confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the S5 SYNTHETIX5 mark in connection with the sale of synthetic urine products;
2. Complainant is the current owner of the trademark, S5 SYNTHETIX5, registered with the United States Patent & Trademark Office (“USPTO”) as Reg. No. 5,616,380 from November 27, 2018;
3. the disputed domain name was registered on December 24, 2015; and
4. Respondent uses the disputed domain name to sell synthetic urine.
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 formal 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.
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 evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003). Complainant provides evidence of its registration of S5 SYNTHETIX5 with the USPTO, a national trademark authority, and has thus established rights in that mark.
The disputed domain name removes the letter and number “S5” from the trademark and adds the word “urine” and the gTLD, “.com”, to form the disputed domain name. The Panel finds that the trademark remains the dominant and memorable part of the disputed domain name and so finds the domain name to be confusingly similar to the trademark (see, for example, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”); Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”)).
The 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 trademark 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 (see, for example, Do The Hustle, LLC v. Tropic Web, Case No. D2000‑0624 (WIPO Aug. 21, 2000).
There is no evidence that Respondent has any trademark rights, nor any suggestion that Respondent might be commonly known by the disputed domain name. Nevertheless, on the evidence an issue arises as to whether, prior to notice of this dispute, Respondent used the disputed domain name in connection with a bona fide offering of goods. Complainant concedes use of the domain name since 2015 and dispute the grievance it now describes, proceedings were only commenced 8 years after Respondent’s first use. Further, and as detailed shortly, Complainant’s assertion of trademark rights since 2009 is not supported by the evidence and its registered rights postdate the creation date and first use date of the domain name.
The first question under paragraph 4(c)(i) of the Policy is when Respondent had notice of the dispute. The Complaint refers to a letter of demand and to an earlier UDRP dispute. The earlier dispute resulted in the decision of Bluebird Trading Ltd. v. Boling, FA 1795068 (Forum Aug. 6, 2018) (“Boling”) involving Complainant’s predecessor-in-interest to the trademark and a party having no obvious connection with Respondent. The letter of demand is dated March 15, 2023, and was directed to a Mr Christopher Swain at 513 Ventures, LLC. The publicly available WhoIs information for the disputed domain name lists Robert Grimm as the registrant name and 513 Ventures as the registrant organization. There is no reference to a Mr Swain, not to an LLC. Further, the address for the registrant organization is not the address to which the letter of demand was directed, albeit that both addresses are in Cincinnati, Ohio.
On this evidence the most reliable date Respondent had notice of the dispute is the date on which the Forum served the Complaint on Respondent, June 8, 2023, but for reasons which follow, the Panel finds the same outcome follows even if March 15, 2023, was taken to be the relevant date.
By Complainant’s admission, the parties offer identical synthetic urine products. Complainant’s assumption throughout its submissions is that the registrant organization and 513 Ventures LLC. are one and the same. It provides evidence that the LLC was founded on August 10, 2005, and began using the disputed domain name in 2015 and that it “continues to use the Domain to provide the Respondent Website that commercially sells synthetic urine products that directly compete with Complainant’s own synthetic urine products.”
The allegation of wrong-doing and the asserted lack of rights or legitimate interest in the disputed domain name hang on the claim that Respondent began that use “long after Complainant’s rights to the Mark were established”, in particular, “because Complainant has established title and rights to the Mark dating back to its predecessors in interest’s first use of the Mark in February 27, 2009.”
Those claims require closer examination. One plank to the argument is that Complainant’s “title and rights to the Mark dating back [to] February 2009 were recognized by a previous Panel”, a reference to the Boling case mentioned above. There, the panelist found that the complainant had “adequately plead it rights and interests in [the] common law trademark.” Aside from the facts that the Boling case involved different parties and a different domain name with a different date of creation, the evidence filed in connection therewith is not available to this Panel and the decision itself provides no discussion of the basis for those rights and interests. Accordingly, the Boling case is of little guidance to this Panel.
The other plank to Complainant’s assertion of rights in the trademark since 2009 rests on (i) USPTO records, (ii) transmission of title documents, and (iii), internet archive material.
The Complaint describes how Lahar Manufacturing Inc. (“Lahar”) registered the trademark as USPTO Reg. No. 4,018,770 on January 14, 2011, claiming a date of first use in commerce of February 27, 2009. Then followed assignments from Lahar to Hopkins Holdings (“Hopkins”); from Hopkins to Bluebird Trading Limited (“Bluebird”), and finally from Bluebird to Complainant.
This latest transfer to Complainant was effective on January 13, 2023, and recorded with the USPTO on January 17, 2023. The assignment did not convey Regn. No. 4,018,770 which, due to non-renewal, had been cancelled by the USPTO on April 6, 2018. Aside from the goodwill in the trademark, what was assigned was Reg. No. 5,616,380 which had been filed by Bluebird on April 9, 2018, again claiming a date of first use of February 27, 2009.
The documents recording this chain of events are not proof of use or reputation of the trademark. The mere reference to transfer of goodwill or unregistered rights in the trademark does not establish that goodwill or those rights exist. Equally, the claim to a date of first use in the USPTO records is not proof of use of the trademark at that time, still less is it proof of continuous use since that date.
What remains is the internet archive material which are screen captures said to show “near continuous use of the Mark on the Complainant Website in the marketing and selling of fake urine products worldwide since at least January 2010.” That claim is not supported by the evidence. The screen captures are from the website at <www.synthetix5.com>. The provenance of that website is not explained in the Complaint. The website does not name Complainant, or any of Complainant’s predecessors-in-interest. It primarily uses the trademark, Synthetix5. All that shows a possible connection with Complainant’s business is screen captures from December 22, 2014, and onwards which show the letter/number combination “S5” along with Synthetix5 on product packaging.
Taking account of the standard of proof required in UDRP proceedings, another panel may have denied the Complaint at this point. The evidence does not establish registered rights in the trademark predating the creation date of the disputed domain name. Nor does it prove common law rights at any point in time, either before or after the date on which the domain name was registered.
However, the critical issue is whether Respondent used the domain name in connection with a bona fide offering of goods or services. Clearly, the use would not be bona fide if it is more likely than not that Respondent knew of Complainant’s trademark and business. What emerges from the evidence is some indication of use of a stylised version of the trademark by Complainant’s predecessor(s)-in-interest from December 2014 onwards. What also emerges is use of the exact same stylised version of the trademark on the exact same goods at a website resolving from the disputed domain name from December 2015 onwards. The Complaint states that Respondent (or, at least, 513 Ventures LLC) purchased Complainant’s stock in bulk. There is no compelling evidence of that claim but nor is there a claim that the goods offered for sale by Respondent are counterfeit. Once the Panel accepts Complainant’s uncontradicted assertions, all that matters for the purposes of this aspect of the Policy is that Respondent appears not to be an authorised reseller of Complainant’s goods and has not resold those goods in conformity with the disclosure obligations first described in the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The Panel finds that a prima facie case has been made that Respondent lacks rights or a legitimate interest in the disputed domain name. The onus thus shifts to Respondent. Absent a Response that onus is not met and so the Panel 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 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.”
The Panel finds direct application of paragraph 4(b)(iv) above. Having already found confusing similarity and given that the resolving website clearly exists for commercial gain, the Panel goes on to find in terms of the Policy that Respondent has attempted to attract internet users to its website by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of that website (see, for example, MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <synthetix5urine.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 18, 2023
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