DECISION

 

Golden State Foods Corp v. Greg Foltz / GSF Consulting

Claim Number: FA2404002095736

 

PARTIES

Complainant is Golden State Foods Corp ("Complainant"), represented by Rosaleen Chou of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is Greg Foltz / GSF Consulting ("Respondent"), represented by Christopher Newberg of KUIPER KRAEMER PC, Michigan, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gsf.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.

 

Sozos-Christos Theodoulou as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 30, 2024; Forum received payment on April 30, 2024.

 

On May 1, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <gsf.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 May 7, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@gsf.com. Also on May 7, 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.

 

A timely Response was received and determined to be complete on June 3, 2024.

 

On June 4, 2024, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed Sozos-Christos Theodoulou 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

The Complainant essentially contends, in the sense of paragraph 4(a) of the Policy, that the Disputed domain name is confusingly similar to its GSF and/or GOLDEN STATE FOODS/GOLDEN STATE FOODS CORP. trademarks; that the Respondent lacks rights or legitimate interests in the Disputed domain name, and; that the Disputed domain name has been registered and is being used in bad faith, as an inactive website.

B. Respondent

The Respondent contends, on the contrary, that the Complainant, despite the Disputed domain name being identical to the Complainant's trademark GSF, has no trademark rights on the Disputed domain name, as the Respondent is not a competitor of the Complainant in the same field of business; that the Respondent has rights and legitimate interests to the Disputed domain name since its registration back in 1993, and; that the Respondent has registered and used the Disputed domain name in good faith, for his own business and/or family. The Respondent is also claiming that the Complainant has shown behavior consistent with reverse domain name hijacking.

 

FINDINGS

The Complaint/Amended Complaint, as well as the Response, have been filed in a way that enables the Panel to learn sufficient facts for deciding on this case. The Panel has, in addition, attempted to make its own additional research, so as to better apprehend the important elements of the dispute.

 

The Disputed Domain Name <gsf.com> was registered on August 11, 1993 by the Respondent (as confirmed by the Registrar and by both parties).

 

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

Complainant asserts rights in the GSF mark based upon a registered trademark with the USPTO (see US Reg. No. 1,681,467, applied for on June 27, 1989 and registered on March 31, 1992). Complainant also refers to three other US trademark registrations, two for GOLDEN STATE FOODS / one for GOLDEN STATE FOODS CORP", namely US Reg. Nos. 1,760,474 and 1,758,802 / 1,677,904, respectively.

 

Further, Complainant contends that Respondent's <gsf.com> domain name is identical or confusingly similar to Complainant's GSF mark. The addition of a gTLD to a mark does not distinguish the disputed domain name from the mark incorporated therein, and is usually considered irrelevant per Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) ("Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference."); see also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Forum Feb. 12, 2007) ("[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).").

 

Disputed Domain Name incorporates the GSF mark in its entirety, merely adding the gTLD ".com". The Panel does not share and rejects Respondent's view that, because Respondent is not a direct competitor of Complainant in the food wholesale business, the Disputed domain name is not confusingly similar to Complainant's trademarks.

 

Therefore, in spite of the fact that 3-letter trademarks generally have low distinctiveness, the Panel finds here that the disputed domain name is identical or confusingly similar to the GSF mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Since proving a negative fact is almost impossible, panelists in UDRP proceedings have generally agreed that it is sufficient for the Complainant to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent.

 

In the present case, Complainant has argued, among others, that it had never authorised Respondent to register the GSF trademark in a domain name, and that it had never licensed its trademark to Respondent; that Respondent has not demonstrated any use of the disputed domain name in connection with a bona fide offering of goods and services or a legitimate non-commercial or fair use of the disputed domain name; and that, in general, there is no other evidence in the case file that could demonstrate that Respondent has been commonly known by the Disputed domain name.

 

In view of the foregoing, the Panel is satisfied that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. In order to rebut Complainant's arguments, Respondent had the possibility to make its own defence.

 

Hence, Respondent argued on the basis of his registration of the Disputed domain name back in 1993, and presented evidence of legitimate use of the Disputed domain name in more than 30 years, for both his own business and his family. He may not have used it for a website, but the use did include email addresses for him and for his family members. This time, Respondent's argument that, there is no direct competition between him / his business and Complainant meets the Panel's agreement, as it confirms the legitimate character of the Disputed domain name's use, without any proven intent to mislead consumers towards Respondent's business by taking advantage of any likelihood of confusion with Complainant's business.  

 

Although it could be interesting to look into this point as well, the Panel finds it unnecessary to refer here to the theory of latches.

 

In view of all the above, the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(ii), because Respondent has proven rights and/or legitimate interests in the Disputed domain name.

 

Registration and Use in Bad Faith

As Complainant has not satisfied Policy ¶ 4(a)(ii), the Panel declines to analyze this third element of the Policy.

 

REVERSE DOMAIN NAME HIJACKING

Respondent alleges that Complainant might be liable of reverse domain name hijacking because of its overall stance in the present matter.

 

Based on the available record, the Panel sees insufficient basis on balance to conclude that the Complaint was brought in bad faith and accordingly declines to make a finding here of reverse domain name hijacking.

 

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 <gsf.com> domain name REMAIN WITH Respondent.

 

 

 

Sozos-Christos Theodoulou, Panelist

Dated: June 17, 2024