DECISION

 

USA QP ENTERPRISES Inc. dba USA Quickprint v. Admin Support / CR Consulting Ohio LLC

Claim Number: FA2310002066056

 

PARTIES

Complainant is USA QP ENTERPRISES Inc. dba USA Quickprint ("Complainant"), Ohio, USA. Respondent is Admin Support / CR Consulting Ohio LLC ("Respondent"), Ohio, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <usaquickprint.com>, registered with GoDaddy.com, LLC.

 

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.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 12, 2023; Forum received payment on October 12, 2023.

 

On October 16, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <usaquickprint.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 October 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@usaquickprint.com. Also on October 17, 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.

 

A timely Response was received and determined to be complete on October 25, 2023.

 

On October 25, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is an offset and digital printing company providing a number of short run, quick printing services to our consumers. It has owned the trade name USA Quickprint since 1985 and also owns Registration No. 1394455 at the United States Patent and Trademark Office for the mark USA QUICKPRINT in a logo form. The disputed domain name was created for a franchisee and once the franchise location ceased to exist the corporate company USA QUICKPRINT had trouble obtaining the domain. The company (along with trademark/name) was sold in 2015 and a number of attempts to obtain the domain was made over the years since. Recently USA Quickprint proposed a sale of the domain that was equal to the estimated value generated by GoDaddy of $1800.00, which is still way beyond the company's budget. The holder of the domain is unresponsive and keeps holding onto what Complainant believes is already its owned domain. The trademark has been owned well before the domain name was created. While Complainant understands the domain was held onto by the designer of the website, the domain belonged to the company which paid for the web designers services at the time of creation.

 

The disputed domain name is confusingly similar to Complainant's trademark as the domain name is our trade name, company name USA Quickprint.

 

Respondent has no rights or legitimate interests as the creation of the domain was owned by a franchisee, and ultimately the corporation USA Quickprint.

 

The disputed domain name was registered and is used in bad faith as the current holder of the domain name is squatting on the domain and not responding or asking an amount that is way beyond the company's financial reach (we are only 4 people and a very tiny company now). Consumers who directly go to usaquickprint.com are making assumptions about our company that we are closing or do not offer online services.

 

B. Respondent

At time of purchasing domain name usaquickprint.com (2001 – earlier) there was NO Trade Name restriction. New Owners of Company filing 2015 "USA Quickprint" not "usaquickprint.com" Plus, in Complainant's USPTO trademark registration, there is no Claim to exclusive right, except image logo. Filling 1986. Also, J&J Fink owners and operators of "USA Quickprint" in Massillon Ohio and Carnation Mall Canton, Ohio. They were non partners of USA Quickprint, Inc or USA Quickprint #1 or #2. I never delt with anyone other than John Fink Jr. and Judith Fink of J & J Fink dba usa quickprint. The business was up for sale because of Johns health. I was doing IT work for them but they were not interested in the domain, as they didn't want to make changes. After Johns passing 2/3/2002, Judith along with her web design company decided to rent domain from me in May 2002 until business sold. 1+ yrs later. When New Owner "A & S Quickprint" dba usa quickprint non partners purchased from J & J Fink, I continued renting with option to purchase. Once that company closed I put domain up for sale. I have never tried to use domain for malice nor tried to sell to competitors. The first offer or correspondence from Said company about domain was 2/6/2021 with low ball offer of $300.00. Then another offer 03/7/2022 for $1200. I didn't notice the offer in 6/20/2022. Then another offer of $1800 9/29/2023, which I responded too. 

 

FINDINGS

-       Complainant has failed to prove that it owns rights in a trademark to which the disputed domain name may be confusingly similar; and

-       Although the evidence and arguments by both parties in this case are so spare as to be largely unintelligible, it appears that the case involves a business dispute that is beyond the scope of the Policy.

 

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.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy sets out the requirement that a Complainant prove that the disputed "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights". The requirement of proving the existence of relevant trademark rights has been described as a "threshold" test, beyond which a complaint may not proceed if it is unmet. See, e.g., Horten Advokatpartnerselskab v. Domain ID Shield Service CO., Limited / Krutikov Valeriy Nikolaevich, D2016-0205 (WIPO Mar. 17, 2016) ("It has been a consensus view among UDRP panels that if the complainant owns a registered trademark, then it generally satisfies the threshold requirement of having trademark rights.") 

 

However, where an asserted registration consists of a design mark and the relevant words have been disclaimed apart from the mark as a whole, this requires the complainant to provide additional evidence that the words have acquired secondary meaning and, thus, status as a trademark as required by Policy ¶ 4(a)(i). See WIPO Jurisprudential Overview 3.0, at ¶1.2.3 ("if the similar elements of the domain name are made up exclusively of disclaimed terms, trademark rights under the Policy may not be found unless the complainant can show sufficient secondary meaning in the disclaimed terms"); and Id. at ¶1.10 ("where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), panels may find that the complainant's trademark registration is insufficient by itself to support standing under the UDRP"). In Bert & Wetta Sales, Inc. v. Ron Seibold, FA 1980161 (Forum Feb. 23, 2022), it was noted that "the USGREENS Trademark registration contains an important disclaimer: 'No claim is made to the exclusive right to use 'USGREENS' apart from the mark as shown.'" In denying a claim against the domain name <usgreens.com>, the Panel found that "Complainant has not proven the first element of the Policy." Id.

 

Here, Complainant submits the details of its USPTO registration for the USA QUICKPRINT mark in a logo form. The registration certificate contains the statement "No claim is made to the exclusive right to use 'USA QUICKPRINT' apart from the mark as shown". This is typical disclaimer language and the USPTO has indicated that "[t]he purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone…." See Trademark Manual of Examining Procedure §1213, citing 15 U.S.C. §1056. Thus, the USPTO has determined that the words "USA QUICKPRINT" portion of Complainant's trademark are not registrable and do not, on their own, function as a trademark. This leads the Panel to find that Policy ¶ 4(a)(i) has not been satisfied by Complainant's submission of its trademark registration.

 

Complainant further submits copies of its USA QUICKPRINT trade name registration certificates for the State of Ohio. However, a trade name is not the legal equivalent of a trademark. Center for Financial Training Atlantic & Central States, Inc. v. Zsolt Bikadi, FA 2051938 (Forum Aug. 4, 2023) ("There is no indication from either certificate that the relevant state performs any kind of examination or review of an application for a trademark" and "UDRP panels have been reluctant to find rights in a mark based upon unexamined U.S. state registrations."). Thus, the Panel is unable to rely on this submission as evidence of trademark rights.

 

Of course, a complainant need not show a registration to establish rights in a mark in order to meet the requirements of Policy ¶ 4(a)(i).  If proven, common law trademark rights are sufficient to saisfy Policy ¶ 4(a)(i). Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) ("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."). Unfortunately, the Complaint is very sparse and the documents submitted make no reference to the types of evidence that would typically support the existence of common law trademark rights in the claimed USA QUICKPRINT mark (e,g., sales, advertising, social media posts, news articles, and other items that demonstrate secondary meaning and public recognition of a trademark).

 

In light of the above, the Panel concludes, by a preponderance of the evidence presented, that Complainant has not met the threshold requirement of proving trademark rights under Policy ¶ 4(a)(i).

 

Business Dispute Beyond The Scope Of The Policy

Even if Complainant had demonstrated its ownership of trademark rights, the Panel has concluded that this dispute is not one that is suitable for resolution through the Policy. Panels have recognized that "[t]he Policy's purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes". Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005). Also see Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007) ("[T]he purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.").

 

Both the Complaint and Response in this matter are very sparse with very little in the way of facts or legal argument, the bulk of which have been recited in the Parties' Contentions section above. They leave many open questions and the Panel is left to try and intuit the overall situation and each party's position. Complainant asserts that "this domain was created for franchisee" but it provides no further details or evidence. Respondent appears to claim that registered the disputed domain name on behalf of an independent entity that is unrelated to Complainant – it states "J&J Fink owners and operators of 'USA Quickprint' in Massillon Ohio and Carnation Mall Canton, Ohio. They were non partners of USA Quickprint, Inc." A further reference is made by Respondent to "'A & S Quickprint' dba usa quickprint non partners purchased from J & J Fink". There is also mention of a sale of "the company" in 2015 but, again, no details are provided or any context for how this fits into the present dispute.

 

From these poorly prepared submissions and very limited facts, the Panel is unable to determine whether Respondent has any rights or legitimate interests in the disputed domain name and whether it was registered and used in bad faith. Further, there seems to be an open question of whether Respondent acted at behest of one of Complainant's franchisees and, if so, under what terms and whether this creates a business relationship between the parties. This simply cannot be divined in the present forum.

 

This does not appear to be a clear-cut case of cybersquatting or targeting of Complainant's claimed mark. Further, the above-mentioned fact and legal issues should be dealt with in a forum where the parties would, ideally, be represented by counsel and would benefit from the availability of more robust evidentiary tools (e.g., exchange of documents in discovery, depositions, cross-examination, questions addressed to the parties by a judge, etc.). As such, the Panel finds it to be more likely than not that the present dispute is outside the scope of the Policy and that the status quo of the disputed domain name should be maintained until the parties can have its fate adjudicated through an appropriate process.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE.

 

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

 

 

 

Steven M. Levy, Esq., Panelist

Dated: October 29, 2023