DECISION

 

PlanetArt, LLC v. Norma Murphy / Personalisation Creation

Claim Number: FA2412002129774

 

PARTIES

Complainant is PlanetArt, LLC ("Complainant"), represented by Thomas P. Burke of PlanetArt, LLC, California, USA. Respondent is Norma Murphy / Personalisation Creation ("Respondent"), Ireland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

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

 

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 December 16, 2024; Forum received payment on December 16, 2024.

 

On December 17, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the <personalisationcreation.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 December 23, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 13, 2025 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@personalisationcreation.com. Also on December 23, 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 January 14, 2025, 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. 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 is in the business of offering custom gifts for sale, including but not limited to blankets, ornaments, coasters, drinkware, clothing, and photography gifts. It has provided these goods since 1990 under the trademark PERSONAL CREATIONS for which it has obtained registrations in the United States, Canada, Ireland, the United Kingdom, Switzerland, and the European Union. Complainant's website is hosted at the domain name <personalcreations.com>.

 

The <personalisationcreation.com> domain name, registered on June 30, 2024, is confusingly similar to the PERSONAL CREATIONS mark as it Simply changes the root of "personal" to "personalisation" and removes the plural "s" from "creations".

 

Respondent has no rights or legitimate interests in the disputed domain name where it is not commonly known by the domain name and it does not make a bona fide offering of goods or services where it offers custom gifts and services that are substantially identical to and compete with those offered by Complainant.

 

The disputed domain name was registered and is used in bad faith based on its disrupting the business of a competitor and where Respondent is intentionally seeking to attract customers to its website, for commercial gain, by creating a likelihood of confusion with Complainant's mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       Complainant has demonstrated its ownership of rights to the PERSONAL CREATION mark and the <personalisationcreation.com> domain name is confusingly similar to the mark under the limited standards applicable to the Policy;

-       The Panel is unable to conclude that Respondent has no rights or legitimate interests in the domain name or that the domain name has been registered and is being used in bad faith as this dispute presents issues that are outside the scope of the Policy and are better suited for resolution through the courts as a possible matter of trademark infringement.

 

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 asserts rights in its PERSONAL CREATIONS mark through its registrations in the United States, the European Union, Singapore, Indonesia, Australia, and other jurisdictions through the WIPO. Registration of a mark in this manner is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) ("Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i)."). Here, Complainant provides either copies of its registration certificates or screenshots from the noted trademark office websites evidencing its trademark registrations.1 Therefore, the Panel finds that Complainant has rights in the PERSONAL CREATIONS mark under Policy ¶ 4(a)(i).

 

Next, Complainant argues that Respondent's <personalisationcreation.com> domain name is identical or confusingly similar to the PERSONAL CREATIONS mark as the mark is recognizable in the domain name and only minor changes are made. The Policy ¶ 4(a)(i) test for confusing similarity, as applied by prior Panels, involves "a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant's trademark and the disputed domain name to ascertain confusing similarity." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Jurisprudential Overview 3.0"), at par. 1.7. This is different, in substance, from the test for a likelihood of confusion as applied by various courts. Changes in spelling, through the addition or omission of a few letters and the addition of a gTLD, rarely distinguishes a disputed domain name from an asserted mark under. See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the "e" and "r" from the mark while adding the ".com" gTLD suffix.); Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent's <hacrs.com> domain name was confusingly similar to the complainant's HACRES mark because it omitted the letter "e" from the mark and added the generic top-level domain ".com"). As the <personalisationcreation.com> domain name changes the root of "personal" to "personalisation", removes the plural "s" from "creations", and adds the ".com" TLD, the Panel finds that it is confusingly similar to Complainant's mark under the specific test applicable to Policy ¶ 4(a)(i). No opinion or finding is made with respect to a likelihood of confusion between the disputed domain name and Complainant's mark for purposes of addressing any claim of trademark infringement.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.").

 

Here, Complainant first asserts that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). In considering this issue WHOIS information can be used to support a finding that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Instron Corp. v. Kaner, FA 768859 (Forum Sep. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed "Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't" as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The WHOIS record for the disputed domain name, as verified to Forum by the concerned Registrar, lists the Registrant Name as "Norma Murphy" and it lists the Registrant Organization as "Personalisation Creation". Although cybersquatters often provide false information for use in WHOIS records, Complainant submits into evidence a copy of a Certificate of Registration, from the Companies Registration Office of Ireland, showing the existence of a registered business named "Personalisation Creation". This validates the WHOIS information and leads the Panel to conclude that it's more likely than not that Respondent is actually know by its registered business name which is identical to the disputed domain name, save for the omitted space and TLD.

 

Next, Complainant asserts that Respondent does not make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). It claims that "Respondent is offering products and services that compete directly with Complainant's business" and, in support, provides screenshots of its own www.personalcreations.com and Respondent's <personlisationcreation.com> websites. Both offer for sale items that may be personalized with names selected by customers including blankets, ornaments, drinkware, clothing, and photography gifts. Further, both sites display images of their products in a series of square images that are four across and aligned in rows down the page. However, there are also a number of significant differences such as Complainant's use of its PERSONAL CREATIONS in a graphic logo form that features a gift box and ribbon image, whereas Respondent's site displays the words 'Personalisation Creation' in plain black letters"; Complainant uses a white background whereas Respondent's background is a pale red; Complainant's prices are listed in U.S. Dollars whereas Respondent's prices are listed in Euros; and Complainant's headers and footers display a series of links and a search bar whereas Respondent's page is more rudimentary, with none of these elements, and its footer displays the message "© 2025, Personalisation Creation Powered by Shopify".

 

Of particular interest to the Panel is the appearance, on Respondent's website, of the following message:2

 

Get to know the face behind the business!

        

Hi everyone, I'm Norma - a mom of 3, a wife, a crafter and a makeup artist.

 

I got married in 2022 and borrowed a Cricut machine to diy some of my wedding items, I absoloutley loved using it and that's where my love for personalising items began. My husband bought me my own Cricut machine that Christmas and I had so much fun personalising items for my kids and myself, this soon turned to friends and family members asking me to personalise items for them and I realised i would love to turn my little hobby into a business.

 

Turning something I love doing into an income to help support my family while still being able to be there for school pick ups and drop offs for my little girls and spend quality time with my baby boy has been such a blessing and I am beyond grateful to each and every one of my customers.

 

The Policy was created to address clear cases of cybersquatting but the present case does not appear to fit that mold. See WIPO Jurisprudential Overview 3.0 at ¶ 4.14.6. Rather, based on a preponderance of the above evidence, the Panel cannot conclude that Respondent is not making a bona fide offering of goods or services and that it has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) based on its apparent operation of an actual business providing customizable items. It recognizes, however, that the present case creates factual and legal issues that may sound in trademark infringement but that is beyond the scope of the Policy as such disputes are only subject to resolution through other venues such as the courts which have available tools that can gather and sift through more comprehensive evidence. See, e.g., AirMax Construçoes Aeronáuticas LTDA v. Richard Rofe / seamaxamerica.com, FA 1763605 (Forum Feb. 9, 2018) (finding serious issues of fact and law that "can be resolved only by the use of forensic powers which a Panel under the UDRP does not have, such as deposition evidence by cross examination, discovery…."). As stated in the decision of Arbor Networks, Inc. v. Benjamin Dynkin / Atlas Cybersecurity, FA 1899115 (Forum July 17, 2020), "[i]f the Complainant wishes to bring proceedings against the Respondent for trade mark infringement, passing off, or question the assertions and evidence of the Respondent's conduct contained in the Response, such a proceeding is more appropriately brought in a court of competent jurisdiction."

 

In sum, the Panel finds that the Complainant has not met its evidentiary burden or presented a prima facie case that the Respondent lacks rights and legitimate interests in the <personalisationcreation.com> domain name.

 

Registration and Use in Bad Faith

In light of the Panel's finding in the previous section, a detailed analysis of Policy ¶ 4(a)(iii) is not warranted here. However, the Panel notes that, while Complainant submits a copy of its Ireland Trademark Registration, it does not provide information or evidence of the extent of its business or brand reputation in that country where Respondent resides. This leaves open a question of whether Respondent knew of and specifically targeted Complainant's trademark in bad faith when it registered and used the disputed domain name.

 

Further, Policy ¶ 4(b)(iv) specifically requires an intention to create a likelihood of confusion with an asserted mark. As noted above, based on the evidence provided, the Panel is unable to determine whether Respondent had an intent to target Complainant's mark and that the matter involves issues of trademark infringement that are beyond the scope of 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 <personalisationcreation.com> domain name REMAIN WITH Respondent.

 

 

 

Steven M. Levy, Esq., Panelist

Dated: January 15, 2025

 

 


[1]  The Panel notes that the submitted United States Trademark Registration Certificates list the trademark owner as "PC Acquisition Inc." which is not a named Complainant in this case. No assignment records or other explanation is provided regarding the relationship of this entity to Complainant. As such, the Panel will not consider these United States Trademark Registrations.

[2]  This message does not appear in the screenshots of Respondent's website submitted by Complainant but was discovered by the Panelist upon visiting Respondent's website of its own initiative as permitted by the discretion provided to it under Rule 10.

 

 

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