DECISION

 

Cabot Brand Co. Ltd. v. R Riggs

Claim Number: FA2403002087031

PARTIES

Complainant is Cabot Brand Co. Ltd. ("Complainant"), represented by Norm J. Rich of Foley & Lardner LLP, District of Columbia, USA. Respondent is R Riggs ("Respondent"), Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cabot.com> ("Domain Name"), 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.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 5, 2024; Forum received payment on March 5, 2024.

 

On March 6, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <cabot.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 March 11, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2024 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@cabot.com. Also on March 11, 2024, 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 April 2, 2024, 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, Cabot Brand Co. Ltd., is a real estate developer of master planned communities, which since 2009 it has done under the CABOT mark.  Complainant asserts rights to the CABOT mark based upon registration with the United States Patent and Trademark Office (e.g., Reg. No. 6,077,428, registered on June 6, 2020).  Respondent's <cabot.com> domain name is confusingly similar because it wholly incorporates Complainant's registered mark, differing only with the addition of the ".com" generic top-level domain ("gTLD").

 

Respondent does not have rights or legitimate interests in the <cabot.com> domain name. Respondent is not commonly known by the Domain Name nor is it licensed or authorized to use Complainant's CABOT mark. Respondent does not make an active use of the Domain Name. Finally, upon being contacted by Complainant with a settlement offer, Respondent sought a sum substantially greater than any out-of-pocket costs connected with the Domain Name.

 

Respondent registered and uses the <cabot.com> domain name in bad faith. Respondent is not making an active use of the Domain Name and registered or renewed the Domain Name with knowledge of Complainant and its rights in the CABOT Mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant having failed to establish bad faith registration and use of the domain name <cabot.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").

 

Identical and/or Confusingly Similar

Complainant has rights in the CABOT mark based on registration with the USPTO (e.g Reg. No. 6,077,428, registered on June 16, 2020). Registration of a mark with the USPTO sufficiently confers a complainant's rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office ("USPTO").").

 

The Panel finds that the <cabot.com> domain name is identical to Complainant's CABOT mark as it wholly incorporates the CABOT mark and adds the gTLD ".com". Adding a gTLD to a wholly incorporated trademark does not negate the similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

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 was registered in 1995. Complainant's first use of the CABOT Mark was in 2009. The Panel does not accept Complainant's submission that ownership of the Domain Name changed hands on or around February 10, 2023. Complainant makes this submission based on the results of a Whois search that indicate that the raw Whois data was updated on that date. Raw Whois data can be updated for numerous reasons, including, for example a change in nameserver or a minor change in contact details. Absent any other compelling information, I am not prepared to conclude that the Domain Name has changed hands based on an unidentified change in Whois data. Equally (noting that the Domain Name has remained registered with the same Registrar) the fact that the Domain Name does not resolve to an active page, whereas in 2021 resolved to a parking page maintained by the same Registrar, is not conclusive evidence of a change in ownership; it is purely speculative.

 

Complainant's submissions that bad faith registration should be found by reason of Respondent's renewal of the Domain Name in awareness of Complainant's rights are not supported by case law under the Policy, See WIPO Jurisprudential Overview 3.0 at ¶ 3.9 which states "Also, irrespective of registrant representations undertaken further to UDRP paragraph 2, panels have found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith." 

 

Respondent's registration of the <cabot.com> domain name predates Complainant's first claimed rights in the CABOT mark, and thus Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), 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."); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) ("Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce.") Here, Respondent registered the Domain Name, which consists of a surname, on February 8, 1995. Complainant first used the CABOT mark on June 30, 2009. In the absence of any persuasive evidence that the Domain Name has changed hands since 1995, I find that Respondent could not have entertained bad faith intentions respecting the CABOT mark because it could not have contemplated Complainant's then non-existent rights in CABOT mark at the moment the domain name was registered.

 

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 <cabot.com> domain name REMAIN WITH Respondent.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: April 3, 2024