DECISION

 

Art4Now, Inc. v. Gerald Waggoner / The Waggoner Law Firm

Claim Number: FA2310002065343

 

PARTIES

Complainant is Art4Now, Inc. ("Complainant"), represented by Benjamin W. Janke of Baker, Donelson, Bearman, Caldwell & Berkowitz, PC, Louisiana, USA. Respondent is Gerald Waggoner / The Waggoner Law Firm ("Respondent"), Tennessee, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bayouwear.com>, registered with Tucows Domains Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 6, 2023; Forum received payment on October 6, 2023.

 

On October 10, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <bayouwear.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 October 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 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@bayouwear.com. Also on October 13, 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 November 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant since 1999 has been producing clothing and collectables in connection with the New Orleans Jazz and Heritage Festival including clothing under the BAYOUWEAR Mark.  Complainant has rights in the BAYOUWEAR Mark through registrations with the United States Patent and Trademark Office ("USPTO"). (including Reg. 3,904,010, registered January 11, 2011 with a stated date of first use of January 1, 1999). Respondent's <bayouwear.com> domain name is identical to Complainant's BAYOUWEAR mark because it consists of the mark in its entirety.

 

Respondent does not have rights or legitimate interests in the <bayouwear.com> domain name. Respondent is not commonly known by the Domain Name and the Domain Name is not being used.

 

Respondent registered and uses the <bayouwear.com> domain name in bad faith as it uses a privacy service. The Domain Name is inactive.  

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant having failed to establish bad faith registration of the domain name <bayouwear.com> has not established all required elements of its claim, and thus its complaint must be denied.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").  

 

The present case is a case where a Complainant makes numerous conclusory or unsubstantiated claims entirely unsupported by evidence that are not accepted by the Panel. This includes claims of: 

1)       Complainant making extensive use of and having extensive reputation in the BAYOUWEAR Mark;

2)       Complainant engaging in extensive marketing of the BAYOUWEAR Mark;

3)       Respondent engaging in "flagrant and deliberate cybersquatting activities";

4)       Respondent intending to participate in a "nefarious and fraudulent scheme to profit off the goodwill associated with Complainant's BAYOUWEAR Mark";

5)       Complainant making previous attempts to resolve the dispute between the parties prior to commencing this proceeding; and

6)       Respondent having actual knowledge of Complainant and its activities.

 

The Complaint as filed provides no evidence of any communications between the Complainant and the Respondent including any attempt to resolve the dispute (as claimed at 5)). Nor does it provide any evidence of how the Respondent has used the Domain Name or any information about Respondent at all; the claims at 3) and 4) above being pure hyperbole. The entirety of the documentary evidence as to Complainant's use of, reputation in and marketing of clothing featuring the BAYOUWEAR Mark is a single New York Times article from 2023, which does not mention the Complainant (it refers to shirts designed by an individual known as Bud Brimberg, whose connection with Complainant is unknown) and does little to establish the reputation of the BAYOUWEAR mark in 2003, when it was registered.

 

Finally, the Panel notes that Complainant Art4Now, Inc. claims rights in the BAYOUWEAR mark pursuant to registrations with the USPTO. Each of the USPTO registrations annexed to the Complaint is registered to an entity called Procreations Publishing Company (Texas Corporation). The Complaint contains no explanation of why its assertions do not match the documentary evidence provided or any evidence of any connection between Complainant and Procreations Publishing Company (Texas Corporation).

 

Identical and/or Confusingly Similar

In light of the Panel's dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of whether the Complainant has rights in the BAYOUWEAR Mark.

 

Rights or Legitimate Interests

In light of the Panel's dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.

 

Registration and Use in Bad Faith

The Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) ("Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith."); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).

 

The Domain Name consists of two generic words. The Domain Name was registered on December 15, 2003. Complainant asserts (without providing any evidence in support) that in 2023 the Domain Name is inactive and there is no evidence before the Panel that suggests that the Domain Name has ever been used to target or refer to Complainant in any way.

 

For the reasons set out in the Discussion section above Complainant has failed to satisfy its burden to demonstrate, on a preponderance of the evidence, that the Domain Name was registered in 2003 in bad faith by the Respondent; i.e. registered with awareness of the Complainant and mal intent instead of being registered because it consisted of a two-word descriptive term.  Specifically, there is no evidence before the Panel that Complainant has ever held rights in the BAYOUWEAR mark, used the BAYOUWEAR mark or had such a reputation in the BAYOUWEAR mark in 2003 that the Panel can conclude that the Domain Name's registration must have been with Complainant and its mark rights in mind. Notwithstanding Complainant's unspecified and unsupported claims of nefarious behaviour, there is no evidence before the Panel that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  

 

As Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), Respondent's use of the Domain Name is immaterial, as the Policy requires a showing of bad faith registration and use.  See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) ("Whatever the merits of Complainant's arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail."). The fact that Respondent is not presently using the Domain Name or is using a privacy service does not change the fact that Complainant has failed to establish that the Domain Name was registered in bad faith, a requirement of the Policy.

 

Therefore, the Panel finds Respondent did not register the Domain Name in bad faith.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <bayouwear.com> domain name REMAIN WITH Respondent.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: November 4, 2023