DECISION

 

Printfly Corporation v. Domenico Muscillo

Claim Number: FA2408002113611

PARTIES

The Complainant is Printfly Corporation (the "Complainant"), represented by Sophie Edbrooke of Gerben Perrott, PLLC, District of Columbia, USA. Respondent is Domenico Muscillo (the "Respondent"), represented by Jason Schaeffer of ESQwire.com, P.C., New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <rushordertees.co> and <rushtees.com> (the "Domain Names"), 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 Panelists in this proceeding.

 

The Honorable Neil Anthony Brown KC and Richard W. Hill as Panelists, David L. Kreider as Chair.

 

PROCEDURAL HISTORY

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

 

On September 3, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <rushordertees.co> and <rushtees.com> domain names are registered with GoDaddy.com, LLC and that the Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that the Respondent is bound by the GoDaddy.com, LLC registration agreement and has thus agreed to resolve domain disputes brought by third parties under ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On September 4, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2024, by which the Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on the Respondent's registration as technical, administrative, and billing contacts, and to postmaster@rushordertees.co, postmaster@rushtees.com. Also on September 4, 2024, the Written Notice of the Complaint, notifying the Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to the Respondent via post and fax, to all entities and persons listed on the Respondent's registration as technical, administrative and billing contacts.

 

A timely Response was received and found to be complete on October 30, 2024.

 

On November 11, 2024, under the Respondent's request to have the dispute decided by a three-member Panel, Forum appointed The Honorable Neil Anthony Brown KC and Richard W. Hill as Panelists, and David L. Kreider as Chair.

 

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 the Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

The Complainant requests that the Domain Names be transferred from the Respondent to the Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant, Printfly Corporation, offers custom printing of men's and women's clothing and accessories via its website at <rushordertees.com> registered with GoDaddy since 2003.

 

The Respondent "targeted" the Complainant's RUSH ORDER TEES Mark and website, the Complaint alleges, first registering its <rushtees.com> domain in 2009, and thereafter its <rushordertees.co> domain in 2011, using the domains to re-direct online traffic to its own screen-printing business.

 

In 2017, the Complainant "reached out to the Respondent", who offered to sell the <rushordertees.co> Domain Name for $6,700.  No sale was consummated.

 

The Complaint alleges the Domain Names and their use by the Respondent are confusingly similar to the RUSH ORDER TEES Mark, purportedly offering the Rush Order Tees Services, and are being used in a manner to intentionally deceive consumers into believing they're communicating with or ordering from Complainant.

 

B. Respondent

Since 2003, the Respondent began selling t-shirts across the New York – New Jersey region and online using the domain name <stylusapparel.com> since 2007. Over the years the Respondent began registering many other descriptive names related to custom printing and custom tee shirt services.  

 

The Respondent bought the Domain Name <rushordertees.co> in 2011, which became available after the prior owner let the domain name expire and the domain name was offered for registration. The Respondent registered the Domain Names in the good faith belief they were generic and descriptive options that were not infringing anyone's trademark rights.

 

The Respondent, Domenico Muscillo, alleges the Complainant did not have trademark rights when the Respondent registered <rushtees.com> in 2009, or when it registered <rushordertees.co> in 2011. When the Respondent registered the Domain Names in 2009 and 2011, he argues, the USPTO agreed that the Complainant had no right to trademark protection and that the words "rush order tees" could not function as a trademark. So, while the Complainant may have the right to limited trademark protection today, the Respondent avers, it was then and now hardly the sole user of this generic term and common search request.

 

In 2017, the Respondent was contacted directly by the Complainant who made repeated unsolicited offers to buy the Domain Name <rushordertees.co>, which the Respondent declined. Later he responded to their email with a potential sale price (US$6,700), but a sale was never consummated. Never did the Respondent contact or seek to sell the Domain Name to the Complainant or another party.

 

FINDINGS

1)       On October 23, 2009, and on August 4, 2011, respectively, the Respondent registered the Domain Names <rushtees.com> and <rushordertees.co>;

2)       On October 23, 2018, the United States Patent and Trademark Office ("USPTO") registered the Complainant's RUSH ORDER TEES Mark, with the disclaimer: "No claim is made to the exclusive right to use the following apart from the mark as shown: 'RUSH ORDER'. Thus, limited protection is afforded the Complainant's registered trademark, to stop parties from directly using RUSH ORDER TEES as a brand, but not use of the term in a descriptive sense or as a search term;

3)       The Complainant has produced no evidence that the Respondent tried to target the Complainant since it registered the Disputed Domains, or that the Respondent is engaged in a pattern of registering domain names corresponding to the Complainant's trademark or to third-party trademarks;

4)       When the Domain Names were registered, the Complainant's alleged mark was not capable of serving as a trademark and Respondent's legitimate interest in registering the Domain Names (along with over 30 other generic or descriptive tee shirt and custom apparel related domain names) was appropriate. Under the Policy, the registration of generic or brandable words such as the Domain Names is allowed, absent evidence of targeting or passing off;

5)       The Complainant made no arguments and submitted no evidence to support a finding of common law trademark rights in its RUSH ORDER TEES Mark, even assuming the possibility that such rights could appertain to a mark comprising exclusively dictionary words.

 

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

The Respondent acknowledges in its Response that the Complainant is the owner of registered trademark rights in the RUSH ORDER TEES Mark by virtue of its 2018 trademark registration with the USPTO.  It must be noted, however, that when the Domain Name <rushordertees.co> was registered in 2011, the Complainant did not have trademark rights in this generic term. See a contrario General Motors LLC v. Josh Oliver, FA 1976673 (Forum Jan. 12, 2022) ("Common law rights in a trademark can be established by evidence of secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor.").

 

At the time the Complainant's present UDRP Complaint was filed therefore, the Complainant's evidence in relation to this Domain Name satisfied the relatively low standing requirement of Policy Paragraph 4(a)(i), and the Panel so finds.

 

The same cannot be said of the <rushtees.com> Domain Name, however, which is neither identical nor confusingly similar to the Complainant's registered Mark.

 

The Panel finds that the Complainant has satisfied Policy paragraph 4(a)(i) in relation to the Domain Name <rushordertees.co> but has failed to satisfy this element in relation to the Domain Name <rushtees.com>.

 

Rights or Legitimate Interests

The Complainant did not provide any evidence showing that the Respondent's fast turnaround custom tee shirt business was not a genuine service.  Given the evidence before it, the Panel finds that the Respondent operates a bona fide custom tee shirt and apparel business under the Domain Names.  The Panel concludes that the Respondent has rights or a legitimate interest in the Domain Names. See Camco Manufacturing, LLC v. Brian Wick / CheapCo.com, FA 1992264 (Forum May 23, 2022) ("Based on the forgoing, the Panel finds that Respondent has shown that prior to the dispute and the registrations of the CAMCO marks Respondent used the domain name in connection with a bona fide offering of goods and services thereby meeting the criteria required under paragraph 4(c)(i) and (iii) of the Policy.").

 

The Panel finds that the Complainant has failed to satisfy Policy paragraph 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds no evidence of bad faith registration or use. The Respondent registered the Domain Names simply because they were available and contained the descriptive common search terms that consumers use when searching for fast turnaround orders for custom tee shirt printing services.

 

With respect to the Respondent's registration of <rushtees.com> in 2009, the Respondent's rights to this Domain Name and ability to use the name in connection with his own custom tee shirt printing business cannot seriously be questioned.

 

With respect to the second Domain Name <rushordertees.co>, while it is an exact match of Complainant's mark, the Panel notes that in 2011 when the Domain Name was registered: 1) the Complainant did not have recognized trademark rights in this descriptive search term that is very common in the industry; 2) In 2015 the USPTO Examining Attorney identified many third-party uses of "rush order tees" in its Office Action refusing registration; and 3) the Respondent was able to register this Domain Name after its prior owner allowed the registration to lapse and the domain name expired.

 

The Panel finds from the evidence that none of the Respondent's conduct reflects "bad faith" in any sense. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) ("As the domain name was registered well before the trademarks and as it was clearly used for a legitimate purpose before the registration of the trademarks and a fortiori, before notification of the dispute, it is clear that Respondent has rights and legitimate interests in the domain name."); see also eWomenNetwork, Inc. v. Terra Serve c/o Domain Administrator, FA 1622849 (Forum July 27, 2015) ("Past panels have declined to find bad faith where, as in the present case, the respondent has shown that its rights in the domain name at issue predate the trademark rights of the complainant."); see also Global Personals, LLC v. Daniel Carvallo, Skyloop Digital Ltd, FA 1995514 (Forum July 18, 2022) ("The Panel finds that Respondent's rights and legitimate interests in the domain name preclude a finding of bad faith. Under Policy ¶ 4(a)(iii), a finding of rights or legitimate interests under (a)(ii) generally renders bad faith analysis irrelevant and/or moot.").

 

        Reverse Domain Name Hijacking

The Complaint provides no evidence of bad faith registration or use of the Domain Names directed towards or "targeting" the Complainants.  The Panel finds that the Complainant knew or should have known that they would be unable to prove that the Respondent lacks rights or legitimate interests in the Domain Names and that the Respondent registered and is using the Domain Names in bad faith.  Moreover, the Panel finds that the Complainant has sought to use the UDRP as a Plan "B" option to attempt, wrongfully, to wrest the Domain Names from the Respondent after the commercial negotiations commenced by the Complainant had broken off.

 

Based on the facts above described, the Panel finds that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) ("To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent's right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge."); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used "the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy").

 

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 <rushordertees.co> and <rushtees.com> Domain Names REMAIN WITH the Respondent.

 

Because the Complainant brought this Complaint in bad faith, the Panel finds REVERSE DOMAIN NAME HIJACKING BY THE COMPLAINANT.

 

 

David L. Kreider, Chair

The Honorable Neil Anthony Brown KC and Richard W Hill as Panelists

Dated: November 14, 2024