DECISION

 

Healthy Concepts dba EasyShake v. Ginesh Baratcumar

Claim Number: FA2405002099201

 

PARTIES

Complainant is Healthy Concepts dba EasyShake ("Complainant"), represented by Matthew J. Lattig of Charter IP LLC, Virginia, USA. Respondent is Ginesh Baratcumar ("Respondent"), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

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

 

PANEL

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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 23, 2024. Forum received payment on May 23, 2024.

 

On May 24, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the <easyshake.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 June 18, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 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@easyshake.com. Also on June 18, 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 24, 2024. The Response referred to attached exhibits but none were received by Forum. Forum followed up with Respondent regarding the exhibits and no response was received.

 

On June 26, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.

 

On June 27, 2024, Forum received an Additional Written Submission and exhibits from Complainant.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, HEALTHY CONCEPTS, dba "EasyShake", is a company based in California that has been in operation since October 11, 2018 with the business name  EasyShake since January 1, 2020. Complainant uses the EASYSHAKE mark in connection with beverage machines and drink pods for shake-type and creamy drinks and other beverages and has rights in the mark based on registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 6,603,915, registered December 28, 2021, filed September 11, 2020, first use September 5, 2020).

 

Respondent's <easyshake.com> domain name is identical or confusingly similar to Complainant's mark.

 

Respondent lacks rights or legitimate interests in the <easyshake.com> domain name since Respondent is not licensed or authorized to use Complainant's EASYSHAKE mark in any manner and Respondent's domain name does not reflect Respondent's common name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use since it  resolves to a parked page of the registrar featuring click-through links and has done so since the date of Respondent's acquisition (almost 4 years).

 

Respondent registered and is using the <easyshake.com> domain name in bad faith. Respondent acquired the domain name on May 27, 2020 from Buydomains.com, which had owned the domain name since July 2013. Complainant acquired common law rights in the EASYSHAKE mark before Respondent registered the domain name.

 

Beginning on September 5, 2020, Complainant sought to ascertain whether Respondent was willing to sell the domain name to Complainant. On December 7, 2023, Complainant notified Respondent of its trademark rights and asked about the potential acquisition of the domain name. Respondent's representative replied:

 

"Whilst we are not using the domain name right now we had used it in the past for our catering range. There's been quite a bit of recent interest in the domain. I would consider selling the domain for the right price. Please make offer for consideration."

 

That day Complainant made an initial offer of $504 USD and received no reply. On January 22, 2024 and February 15, 2024, Complainant offered Respondent $1,000 USD to buy the domain name and on February 17, 2024, the representative of Respondent replied: 

 

"We'd accept an offer in the region of €11,500." 

 

On March 15, 2024, Complainant's attorney sent a "final-offer" letter to Respondent, the final offer being $1,250.00, giving actual notice of Complainant's trademark rights and of Complainant's products. Respondent's representative replied on March 19, 2024, saying Respondent secured the domain for a Gastro brand of cream chargers (citing images from 2019/2020) marketed in association with Worldwide Gas. Complainant's search of websites for Gastro products found no evidence of Gastro Easy Shake cream chargers; that there is no market presence whatsoever online for Gastro Easy Shake cream chargers in the US or the UK and no "Easy Shake" product of Respondent or another is advertised for sale on <easyshake.com>.

 

Respondent renewed its registration of the domain name on or about April 23, 2024 and, in doing so, violated its representations and warranties in paragraph 2 of the Policy:

 

"By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."

 

Complainant submits that per the representation and warranty of UDRP Policy ¶ 2 a registrant will not use the domain "now or in the future" in violation of any laws or regulations. See City Views Ltd. v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643, <mummygold.com>, ("This effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another's rights . . . [which] extends to any use of the domain name in the future."). Under this view, "[if] a party uses the domain name in the future so as to call into question the party's compliance with the party's representations and warranties, there may be retroactive bad faith registration."  Id.  

 

Under UDRP Policy ¶ 2, it is Respondent's responsibility (as an individual registrant) to determine whether his domain name registration of <easyshake.com> infringes or violates someone else's rights. Respondent violates clause UDRP Policy ¶ 2(b) as he has knowledge that continued renewal of <easyshake.com> and use thereof in the future to sell or market his alleged products will likely infringe upon or otherwise violate the rights of Complainant or a third party. Namely, should Respondent use this domain name in the future to sell products which make shake-type or creamy drinks, this directly calls into question Respondent's compliance with his representations and warranties under UDRP Policy ¶ 2. As such, such alleged future use as described above by Respondent additionally violates clause UDRP Policy ¶ 2(d) as he would be knowingly using <easyshake.com> in violation of applicable laws or regulations.

 

Thus use of <easyshake.com> in the future, given the evidence above, calls into question Respondent's compliance with its representations and warranties of UDRP Policy ¶ 2. Accordingly, for at least the above reasons, and/or coupled with additional reasons set forth below, Respondent's registration of the disputed domain name <easyshake.com> and recent renewal, as well as Respondent's use and conduct thereof in respect of <easyshake.com> is in bad faith.

 

Further, Respondent violates Paragraph 4(b)(i) of the UDRP Policy in that Respondent counteroffered to sell the disputed domain name to Complainant for over $12,350+ USD after Complainant made an initial good faith offer ($504) and a renewed offer ($1,000). Additionally, due to the lack of any individual registrant owner of <easyshake.com> at the time of Respondent's acquisition (having been offered for sale directly by Buydomains.com), it is highly doubtful that Respondent's out-of-pocket costs including acquisition (on May 27, 2020) of the domain name and continued maintenance exceeds Complainant's original offer of $504.

 

Past panels have found that attempting to sell a disputed domain name for well above out-of-pocket costs incurred in obtaining the disputed domain name demonstrates bad faith pursuant to Policy Para. 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) ("Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy Para. 4(b)(i)."); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant).

 

Thus, bad faith may be found under Policy Para. 4(b)(i) where a domain name is for sale at a price that is in excess of costs of registration or maintenance associated with a domain name. See also Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) ("A respondent's general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy Para. 4(b)(i)."); see also Galvanize LLC, dba Galvanize v. Brett Blair / Christian Globe Network, FA1405001557092 (Forum June 26, 2014) (finding that the respondent registered and used the disputed domain name in bad faith under Policy Para. 4(b)(i) because it countered Complainant's offer to buy the disputed domain name with an offer to sell the disputed domain name of $100,000). Based on these previous panels, Respondent's registration of <easyshake.com> and recent use and conduct thereof is in bad faith.

 

Considering a totality of the circumstances, Respondent registered the disputed domain in bad faith. Complainant procured 14 website screenshots historically recorded by the Wayback Machine, in date range from 2011 to 2022, and then captured selected screenshots of <easyshake.com> shortly after Respondent acquired the domain name until present. Each screenshot either resolves to a blank page with no website content, or "splash pages" that redirect to offered services of the registrar. Respondent has not actively used its domain name at all in almost four (4) years. Panels have held that this failure to use the disputed domain names signals bad faith registration and use according to Policy Para. 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent's failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).

 

For these additional reasons, Respondent's registration of <easyshake.com> and recent use and conduct thereof in respect of <easyshake.com> is in bad faith.

 

B. Respondent

 

Respondent is HAYAT BEVERAGES AND CATERING SUPPLIES, S.L.U. & PARTNER ORGANISATIONS.

 

The domain name <easyshake.com> was acquired in 2010, ten (10) years prior to Complainant filing for a trademark in the same name in 2020. The name easyshake was not novel when Complainant applied to trademark it as it had been previously applied for but the application was not pursued by the previous applicant.

 

Respondent asserts a legitimate interest in the domain name <easyshake.com> under Paragraph 4(c)(i) of the Policy. Respondent has actively utilized the domain name in its business operations, offering a range of beverage-related products and services that align with the descriptive nature of the domain name. These activities are well-documented and were initiated long before the receipt of the complaint, as evidenced by the attached exhibits that include website content, marketing materials, and transaction histories that demonstrate the domain's active use in commerce.

 

Respondent, HAYAT BEVERAGES AND CATERING SUPPLIES, S.L.U. & PARTNER ORGANISATIONS, is commonly known both locally and in the online community by the domain name, as it forms a critical part of its branding and marketing strategy. This alignment with the domain name substantiates its legitimate interest, independent of trademark registration.

 

Respondent's use of the domain name is primarily for legitimate business purposes directly related to its trade name and in alignment with the nature of its offerings, not for purposes of trading on the trademark rights of others or misleading consumers.

 

The registration and use of the domain name by Respondent do not exhibit any of the typical characteristics of bad faith outlined under UDRP Paragraph 4(b). Instead, the domain name's use by Respondent has been consistent with normal business practices and in a manner congruent with the fair use of a descriptive term.

 

The sustained use of the domain name in the course of conducting business confers upon Respondent rights under common law to use the domain name commercially. These rights are recognized under principles of trademark law, where the continuous and prior use of a domain name for legitimate business purposes establishes rights that are protected under both the UDRP and national trademark laws.

 

Respondent asserts that the domain name <easyshake.com> was initially registered in good faith. The domain name, comprising common English words related to Respondent's business in the beverage industry, was chosen for its relevance and utility in describing and promoting Respondent's products. This choice aligns with the guidelines of the UDRP, which recognize the legitimacy of registering domain names that are descriptive or generic when done in good faith (UDRP Paragraph 4(a)(i)). Respondent's registration aimed to enhance the online presence of its business and did not target any third-party trademark rights, particularly those of Complainant.

 

Respondent has consistently used the domain name for a bona fide offering of goods and services, as evidenced by the active and functional business website associated with <easyshake.com>. Detailed records of transactions, marketing materials, and customer interactions provided in the annexed documents underscore the legitimate use of the domain in commerce.

 

Respondent has never employed the domain name to intentionally mislead or divert consumers for its advantage by creating a likelihood of confusion with the Complainant's mark. As stipulated under UDRP Paragraph 4(b)(iv), bad faith use involves circumstances where the domain name is used to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant's mark. Respondent's use of the domain name has been transparent, consistent with its business identity, and devoid of any deceptive intent, which substantiates its good faith.

 

There has never been an intention on the part of the Respondent to sell, rent, or otherwise transfer the domain name to the Complainant or any third party for profit. The UDRP Paragraph 4(b)(i) considers intentions to sell the domain name to the trademark owner or a competitor for an unreasonable price as indicative of bad faith. The domain name's use has been solely in the ordinary course of business, and any inquiries or offers received regarding the sale of the domain have not been solicited by the Respondent, thus reinforcing the absence of bad faith.

 

Respondent's use of the domain name has not disrupted the business of Complainant or any other party. This use aligns with UDRP Paragraph 4(c)(iii), demonstrating that the domain name has been used legitimately, without intent to misappropriate trademark value from others for commercial gain. Respondent has contributed positively to consumer choice and market competition without infringing on the legal rights of others, which further supports the claim of registration and use in good faith.

 

Identical or Confusingly Similar

Considering the descriptive nature of the term "easyshake," its use in the domain name <easyshake.com> by Respondent in connection with a bona fide offering of goods or services, and the lack of demonstrated consumer confusion, the Respondent respectfully argues that the domain name is not confusingly similar to Complainant's trademark in the context of trademark law and UDRP provisions. Respondent's registration and use of the domain name should be seen as an exercise of the right to use a common term in a manner consistent with its descriptive meanings, not as an infringement on the trademark rights of Complainant.

 

Rights or Legitimate Interests

Respondent has utilized <easyshake.com> to market and sell beverage-related products, which directly corresponds to the descriptive nature of the term "easy shake." The attached exhibits demonstrate the use of the domain in advertising, customer engagement, and actual sales transactions, all initiated well before any notice of this dispute.

 

Respondent has been commonly known as "EasyShake" in its market, evidenced by customer testimonials, marketing materials, and business correspondence using this name, thereby establishing a legitimate interest in the domain name.

 

Respondent's use of <easyshake.com> is neither misleading nor tarnishing Complainant's trademark but is a straightforward descriptive use.

 

The overall conduct of Respondent supports the absence of any intention to derive unfair benefit from Complainant's trademark rights. Respondent's choice of the domain name was guided by the term's relevance to its products and was not intended to exploit Complainant's trademark status for competitive advantage. This aligns with UDRP policy which recognizes the legitimacy of using descriptive terms in domain names for their primary meaning.

 

Registered and Used in Bad Faith

Respondent has not engaged in any of the activities under UDRP Paragraph 4(b). The domain name's registration was driven by its descriptive value relevant to Respondent's business and not by any intention to capitalize on Complainant's trademark. The ongoing use of the domain name for legitimate business purposes without any deceptive intent or practice further evidences the absence of bad faith. Respondent's actions and use of the domain name have been consistently transparent and aligned with fair business practices, thereby nullifying any allegations of bad faith registration or use.

 

C. Complainant's Additional Submission

 

Complainant's trademark and Respondent's domain name are identical, and both parties are in the shake making business. To the extent Respondent alleges sales of Easy Shake charger refills and sold them with Easy Shake-branded cream whippers, there is no evidence provided by Respondent to support these allegations. Rather, Complainant has found no public instance of any products for sale under an Easy Shake label.

 

Respondent has provided no attached exhibits in support of its alleged significant sales and expenditures and continuous prior use of the domain name when conducting business, other than a shakes page from Respondent's catering site "www.roselledelight.com", to which the domain name now forwards. The forwarding was set up a few hours after Respondent received the Complaint. This appears to be the first use of the term Easy Shake in connection with any Respondent product online. This page creation points to a lack of veracity and credibility in Respondent's allegations as to use, continuous use or any use of <easyshake.com>. There is evidence of digitally-altered photographs on the shakes page with text "Easy Shake" applied digitally.

 

Complainant reviewed the entirety of https:/hayat.es/en/, which is the Hayat Beverages domain, making screenshot printouts of 20 webpages. Complainant searched social media and conducted other online searches to see if Easy Shake is attributable to Respondent's company. None of the 20 webpages mention the word "Easy" or "Shake" at all, anywhere. A complete search was conducted. The social media page for Hayat Beverages on Instagram has a homepage and five (5) posts, none that mention the word "Easy" or "Shake". Broader search of Hayat Beverages for mention of "Easy" or "Shake" on Google, Facebook, Twitter and LinkedIn revealed that no other online presence exists with Hayat Beverages and Easy Shake together.

 

Respondent alleges that its rights to the domain name are further cemented by prior use, which has been continuous, substantial, and commercially legitimate. In its initial reply to an offer to acquire the domain name Respondent said: "Whilst we are not using the domain right now we had used it in the past for our catering range."

 

In the absence of any evidence provided by Respondent to show that the domain name is primarily for legitimate business purposes directly related to its trade name and in alignment with the nature of its offerings, that reply and the new shakes page created after service of the Complaint  would indicate that Respondent had no legitimate business purpose (at least not until the Complaint was filed) and was looking to make a tidy profit on sale of the domain name to Complainant.

 

Respondent asserts that the domain name <easyshake.com> was initially registered in good faith. In light of its long period of non-use, and its first actual use only once a Complaint was filed against Respondent, this is a questionable assertion. The registration of <easyshake.com> has not enhanced the online presence of its business, as alleged by Respondent. Further, and after receiving a cease-and-desist letter in March 2024 giving actual notice of Complainant's trademark rights, Respondent went and renewed the domain a month later (April 2024).

 

Respondent asserts that its use of the domain name has not disrupted the business of Complainant. Because the domain is held by Respondent in bad faith, Complainant has been compelled to acquire over 100 domains to establish a presence around their trademark, the identical domain of which is being held by Respondent in bad faith as a cybersquatter. 

 

Moreover, Google SEO results are also impacted by the domain not being owned by Complainant, who is making considerable effort to market the EasyShake® brand. Conversely, Respondent has made no effort to market the Easy Shake brand but is receiving the SEO benefit of Complainant's marketing effort.

 

Respondent says it has "held the domain since 2010". This statement is obviously and blatantly untrue. Bald allegations such as these impugn the credibility of the Respondent and provide additional momentum to a holding of bad faith use and registration of the domain name.

 

FINDINGS

Complainant has failed to establish all the elements entitling it to relief.

 

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 has shown that it has rights in the EASYSHAKE mark through registration with the USPTO (Reg. No. 6,603,915, registered on December 28, 2021 in International Class 7 for "Machines for making beverages from powdered drink blends in plastic pods, namely, protein powder blends", upon application filed on November 9, 2020, claiming first use on September 5, 2020 and first use in commerce on December 24, 2020).

 

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name: WIPO Overview 3.0, section 1.7.

 

The Panel finds Respondent's <easyshake.com> domain name to be identical to Complainant's mark, since it incorporates the entirety of the mark and the inconsequential ".com" generic top-level domain ("gTLD") may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

 

Complainant has established this element.

 

Rights or Legitimate Interests

In light of the Panel's findings below, it is unnecessary to consider this element.

 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.

 

(i)                      circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii)        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;

(iii)         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 its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.

Complainant's evidence shows that the <easyshake.com> domain name was originally registered on May 23, 2010 and, contrary to Respondent's assertion, was acquired by Respondent on May 27, 2020. This was  several months prior to Complainant's application to register the EASYSHAKE mark and several months prior to its claimed first use of the mark.

 

The WIPO Jurisprudential Overview 3.0 provides:

 

"3.8 Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?

 

3.8.1 Domain names registered before a complainant accrues trademark rights

 

Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent. (This would not however impact a panel's assessment of a complainant's standing under the first UDRP element.)

…

Merely because a domain name is initially created by a registrant other than the respondent before a complainant's trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant's trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.

…

3.8.2 Domain names registered in anticipation of trademark rights

 

As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent's intent in registering the domain name was to unfairly capitalize on the complainant's nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.

 

Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent's insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant's filing of a trademark application."

 

There is no evidence of any such scenarios in this case.

 

Complainant contends that it had established common law rights in the EASYSHAKE mark prior to Respondent's acquisition of the domain name and prior to the indicated first use of September 5, 2020 on the face of the trademark registration. It submitted a Declaration of a co-founder and officer of Complainant in support of that submission (Exhibit P to the Complaint). 

 

Section 1.3 of the WIPO Overview provides:

 

What does a complainant need to show to successfully assert unregistered or common law trademark rights?

 

To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services.

 

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

…

Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.

…

Even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark rights, the strength of the complainant's mark may be considered relevant in evaluating the second and third elements."

 

The EASYSHAKE mark is comprised solely of descriptive terms which are not inherently distinctive. The Panel has carefully examined Complainant's Declaration and its attached examples. These show that Complainant was formed on October 11, 2018 and registered the domain name <healthyconceptsco.com> in the same month and used it for its landing page in 2019, redirecting to that page several other domain names, none of which contained the words "easy shake".

 

Complainant began surveys and focus groups in January 2019, using a form which did not contain the EASYSHAKE mark but asked, in one of the numerous questions:

 

"If we were to give you device that would quickly and easily make a delicious protein shake, what would you name it?"

 

The Declaration claims there was an EasyShake promotion at a March 2019 Trade Show but there is no evidence of the use of the mark at that show.

 

From January 1, 2020 Complainant displayed the business name EASYSHAKE at its premises in California.

 

In March 2020 a "Go To Market Plan" contemplated:

"1. Focused on USA

2. Marketing: Target product names that describe the main consumer benefit ("Easy") and the product descriptor ("Shake"). Established dba Jan 1st for "EasyShake" with state of California.

a. Heavy investments into social media to create brand awareness and simple e-commerce purchasing

i. Focused on USA only"

 

The Declaration attaches an "EasyShake® brand Summary of Financial Statements Oct 11, 2018 to May 27, 2020" indicating:

 

Marketing: Focus Groups conducted about EasyShake® brand & future products $ (572.44)

Website, Social Media & Email exposure to publicize EasyShake® brand coming soon $ (487.86)

EasyShake® Product development for a creamy / shake beverage making system $ (2,226.05)

Trade Shows attended on behalf of emerging EasyShake® brand by Healthy Concepts $ (105.00)

Printed Advertisement of EasyShake® brand coming soon + branded shipping supplies $ (115.66)

Patent Filing Composition and USPTO Application for EasyShake® creamy /shake system design I.P. $ (5,513.68)

 

There is no evidence of the use of the EASYSHAKE mark in relation to any of these expenditures.

 

The <healthyconceptsco.com> landing page was replaced by <theeasyshake.com>, registered by Complainant on September 8, 2020.

 

The Declaration states that Complainant has been selling its EasyShake system and pod packs across the United States and internationally since 2020, examples being 7 selected US invoices beginning 2020 and 5 international invoices beginning 2022. A sale made to a customer on the Isle of Walney (Barrow-in-Furness) in Cumbria (UK) is about 100 miles from the location of Respondent.

 

The Panel notes that the earliest invoice (to a buyer in California) is dated December 12, 2020 and that the invoice to a buyer in Barrow-in-Furness for "EasyShake® System Starter Pod Pack" is dated January 23, 2023, long after Respondent registered the domain name.

 

Taking all these circumstances into account, the Panel is not satisfied that Complainant has established common law rights in the EASYSHAKE mark prior to the registration of Respondent's domain name on May 27, 2020. Accordingly, the Panel finds that Respondent, based in the UK, was unaware of Complainant's then non-existent mark when registering the domain name and did so in good faith.

 

As to Complainant's contention that Respondent's renewal of its domain name registration in April 2024 violated its representations and warranties in paragraph 2 of the Policy, the WIPO Overview, section 3.9 provides:

 

"…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."

 

As to Complainant's reliance on the concept of retroactive bad faith registration, the WIPO Overview, section 3.2.1 notes that "a number of cases in 2009 and 2010 (including Mummygold, Octogen, Parvi and Jappy) explored application of registrant representations in UDRP paragraph 2 in finding so-called "retroactive" bad faith registration; while this particular concept has not been followed in subsequent cases, UDRP paragraph 2 may be relevant on its own terms." 

 

See Coolside Limited v. Get On The Web Limited, WIPO Case No. D2016-0335 (April 26, 2016).

 

Complainant contends that Respondent has not actively used its domain name at all in almost four (4) years signalling bad faith registration and use according to Policy Para. 4(a)(iii). Assuming for present purposes, without so deciding, that Respondent's inactive use of the domain name constitutes bad faith use, the Panel is not prepared to find that such inactive use is evidence of bad faith registration, for the reasons stated in Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085:

 

"Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations. In Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782, the panel stated that "If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith". In Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology, WIPO Case No. D2000-0026, the Respondent registered a domain name to reflect its own business name but subsequently sought to sell the name for profit when its business dissolved. The panel found that to decide the case on the subsequent bad faith action would "extend the Policy to cover cases clearly intended to be outside its scope." Similarly, in Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005, the respondent registered the disputed domain name in good faith but subsequently began to use it in bad faith. It was held that because the registration was made in good faith the requirement of Paragraph 4(a)(iii) was not met".

 

As to Respondent's counteroffer to sell the disputed domain name to Complainant "in the region of €11,500" after Complainant made an initial offer of $504 and a renewed offer of $1,000, it is clear from the timeline set out in the Complaint that Complainant initiated the approach to Respondent to ascertain whether Respondent would sell the domain name to Complainant and made the initial offers, which Respondent did not accept. In light of Respondent's registration of the domain name prior to the acquisition of trademark rights by Complainant, these circumstances do not support a conclusion that Respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant. 

 

Complainant has failed to establish this element.

 

DECISION

Complainant 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 <easyshake.com> domain name REMAIN WITH Respondent.

 

 

 

Alan L. Limbury, Panelist

Dated: June 30, 2024.