Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network
Claim Number: FA1405001557092
Complainant is Galvanize LLC, dba Galvanize (“Complainant”), represented by Ian O'Neill of Cooley LLP, Colorado, USA. Respondent is Brett Blair / ChristianGlobe Network (“Respondent”), represented by Mark D. Schneider of Gifford, Krass et al., Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <galvanize.com>, registered with Tucows, Inc.
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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2014; the National Arbitration Forum received payment on May 1, 2014.
On May 1, 2014, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <galvanize.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 May 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2014 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@galvanize.com. Also on May 12, 2014, 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 2, 2014.
Complainant submitted a timely Additional Submission on June 9, 2014.
Respondent submitted a timely Additional Submission on June 11, 2014.
On June 12, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates hi-tech start-up accelerate communities in Denver and Boulder, Colorado and San Francisco, California. Complainant provides business consulting, strategic support and physical facilities to select technology companies and digital startups. Complainant provides physical office space in four separate office locations for as many as 150 different companies.
Complainant owns a registration for the GALVANIZE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,356,593 registered June 25, 2013, filed May 4, 2012, first use November 30, 2011).
Respondent’s <galvanize.com> domain name is identical to Complainant’s GALVANIZE mark. The disputed domain name incorporates Complainant’s mark in its entirety while only adding the generic top-level domain (“gTLD”) “.com.”
Respondent does not have any rights or legitimate interests in the <galvanize.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its GALVANIZE mark in any way. The <galvanize.com> domain name resolves to a parked page featuring click-through links.
Respondent registered and is using the <galvanize.com> domain name in bad faith. Respondent has engaged in a pattern of registering domain names incorporating established trademarks, which constitutes bad faith under Policy ¶ 4(b)(ii). Respondent has registered 807 domain names. Respondent offered to sell the disputed domain name to Complainant for $100,000 after Complainant has made an initial offer of $2,500, and a broker purporting to be negotiating on behalf of Respondent offered to sell the disputed domain name to Complainant for a price in the “mid five figures.” Respondent originally paid $2,000 for the disputed domain name.
B. Respondent
Respondent is the majority shareholder and managing member of two industrial refractory block manufacturing companies. One application for which industrial refractory blocks are used is placement into a galvanizing furnace. Respondent’s manufacturing companies produces, among other types of refractory blocks, blocks used with galvanizing furnaces.
The term of the disputed domain name is generic in nature.
Respondent purchased the <galvanize.com> domain name on or about September 11, 2011 with the intention of using the disputed domain name in connection with the promotion of one or both of Respondent’s refractory block manufacturing companies.
Respondent confirms that he received an offer from Complainant to buy the <galvanize.com> domain name approximately two and a half years ago, but Respondent has no recollection of making an offer to sell the disputed domain name to Complainant. Further, Respondent is unaware of any alleged broker that may have approached Complainant concerning the sale of the disputed domain name. Respondent has never done business with Domain Holdings concerning the sale of the disputed domain name.
Respondent receives no revenue from the parked page connected to the <galvanize.com> domain name. Respondent’s registration of the disputed domain name predates Complainant’s rights in the GALVANIZE mark, and thus Respondent cannot have registered the <galvanize.com> domain name in bad faith. Respondent purchased the domain name in September of 2011, and Complainant’s stated first use on the trademark registration screenshot is November 30, 2011.
C. Complainant’s Additional Submission
Respondent claims to intend to use the <galvanize.com> domain name in connection with the promotion of his refractory block manufacturing companies, but Respondent has not used the disputed domain name for that intended purpose since Respondent obtained the domain name in September 2011.
Complainant’s first use, per its trademark registration, is November 30, 2011; however, Complainant’s declaration in Exhibit B claims a first use “at least as early as first quarter of 2011, or thereabouts.” Complainant submits additional examples of its use of the GALVANIZE mark in commerce, including on the exterior of its offices and on its official website.
Complainant attaches Exhibit W, which shows 405 domain names registered under the email address brett@clergy.net and 398 domain names registered under the email address brettcblair@gmail.com.
D. Respondent’s Additional Submission
Respondents owns two legitimate refractory businesses. “Galvanizing” is a generic term. The Domain Name was obtained in good faith. Respondent did not hire a broker to sell the disputed domain name.
Respondent does not know who the alleged broker is or why that person was offering to sell <galvanize.com>. Respondent has also never retained or otherwise done business with DomainHoldings concerning the sale, possible sale, or transfer of <galvanize.com>.
The Panel finds that:
1. The domain name <galvanize.com> is confusingly similar to Complainant’s registered trademark.
2. The Respondent has not established rights or legitimate interests in the domain name <galvanize.com>.
3. The Respondent has registered and is using the domain name <galvanize.com> in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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.
Complainant contends it owns a registration for the GALVANIZE mark with the USPTO (Reg. No. 4,356,593 registered June 25, 2013, filed May 4, 2012, first use November 30, 2011). Past panels have found that the relevant date of rights in a trademark dates back to the filing date of the trademark application. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds that Complainant has rights in the GALVANIZE mark within the meaning of Policy ¶ 4(a)(i) dating back to the USPTO filing date of May 4, 2012.
Respondent contends that it purchased the <galvanize.com> domain name on or about September 11, 2011. Accordingly the registration date predates Complainant’s relevant date of trademark rights. However, Complainant may still be found to have predating rights under Policy ¶ 4(a)(i) by way of common law rights. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel may determine whether Complainant has established common law rights, which past panels have found to be sufficient to meet the burden of establishing rights under Policy ¶ 4(a)(i) and to demonstrate priority in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights require that Complainant’s mark has established a secondary meaning. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning). In The Gourmet Depot v. DI S.A. / Administration DomComplainant, FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel stated that evidence relevant to proving secondary meaning “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” Here, Complainant’s declaration in Exhibit B claims a first use “at least as early as first quarter of 2011, or thereabouts.” Complainant submits additional examples of its use of the GALVANIZE mark in commerce, including on the exterior of its offices and on its official website. See Complainant’s Additional Submission Exhibit V. The Panel determines that Complainant has provided sufficient evidence to prove a secondary meaning has attached to the GALVANIZE mark. Accordingly the Panel finds that Complainant has established common law rights pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <galvanize.com> domain name is identical to Complainant’s GALVANIZE mark. Complainant states that the disputed domain name incorporates Complainant’s mark in its entirety while only adding the gTLD “.com.” The Panel notes that the addition of a gTLD to trademark in a disputed domain name is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant). Therefore, the Panel finds that Respondent’s <galvanize.com> domain name is identical to Complainant’s GALVANIZE mark pursuant to Policy ¶ 4(a)(i).
While Respondent argues that its registration of the <galvanize.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 0888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent does not have any rights or legitimate interests in the <galvanize.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its GALVANIZE mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Brett Blair” as the domain name registrant and “ChristianGlobe Network” as the registrant organization. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the totality of the evidence on record in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the GALVANIZE mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <galvanize.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that the <galvanize.com> domain name resolves to a parked page featuring click-through links. Past panels have found that such a use does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because the <galvanize.com> domain name resolves to a parked page that displays click-through links.
Complainant notes that, although Respondent claims to intend to use the <galvanize.com> domain name in connection with the promotion of his refractory block manufacturing companies, Respondent has not used the disputed domain name for that intended purpose since Respondent obtained the domain name in September 2011.
Past panels have found that a Respondent may fail the tests of Policy ¶¶ 4(c)(i) and 4(c)(iii) where a Respondent has failed to make an active use of a disputed domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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)); see also Beat the Bookstore, LLC v. May Enter., FA 589501 (Nat. Arb. Forum Dec. 19, 2005) (finding that the respondent’s “protracted period of inaction” in its development of the disputed domain name for over two years indicated that the respondent had no rights or legitimate interests in the disputed domain name). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial for fair use pursuant to Policy ¶ 4(c)(iii) because Respondent has failed to make an active use of the <galvanize.com> domain name for Respondent’s stated intended purpose of promoting its refractory block manufacturing companies.
Complainant contends Respondent registered and is using the <galvanize.com> domain name in bad faith. Complainant asserts that Respondent offered to sell the disputed domain name to Complainant for $100,000 after Complainant has made an initial offer of $2,500, and a broker purporting to be negotiating on behalf of Respondent offered to sell the disputed domain name to Complainant for a price in the “mid five figures.” See Complainant’s Exhibit B and D. Complainant states that Respondent originally paid $2,000 for the disputed domain name. 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 ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. 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 ¶ 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). Therefore, the Panel finds that Respondent registered and is using the <galvanize.com> domain name in bad faith under Policy ¶ 4(b)(i) because Respondent countered with an offer of $100,000 when Complainant offered to buy the disputed domain name for $2,500.
Respondent alleges that its registration of the <galvanize.com> domain name predates Complainant’s alleged rights in the mark and thus Respondent cannot have registered the <galvanize.com> domain name in bad faith. Respondent purchased the domain name in September of 2011, and Complainant’s stated first use on the trademark registration screenshot is November 30, 2011.
On the other hand Complainant declared in Exhibit B a first use “at least as early as first quarter of 2011, or thereabouts.” Furthermore Complainant submitted additional examples of its use of the GALVANIZE mark in commerce, including on the exterior of its offices and on its official website. As already mentioned, the Panel is satisfied that the Complainant has in this case put forward a prima facie case that at the time of registration he had common law rights in his name that are recognised under the UDRP. The Panel further agrees, that prior to a limited liability company’s formation, the organizer of such business entity, must take a number of steps to form the limited liability company in order to bring it into existence. The Complainant’s formation date is therefore not necessarily related to Complainant’s first use of the mark “galvanize”. The Panel further notes that the Respondent has not provided any evidence of its intention to use the Domain Name for the promotion of one or both of Respondent’s refractory block manufacturing companies. The Panel also notes that Respondent has not put the domain name to use in the 2 ½ years it has been in his possession. Finally the Panels notes, that the Respondent was not able to submit substantial evidence about the purchase date, the purchase price or the former owner of the disputed Domain Name.
In the Panel’s opinion the most realistic interpretation of the actions of the Respondent is that he registered the Domain Name in the hope that he might be able to sell it at a significant profit to the Complainant or alternatively to someone who could use the Domain Name to his commercial advantage by engaging in the activity contemplated by paragraph 4(b)(iv) of the Policy. See Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc.), WIPO Case No. D2003-0320, the Panel acknowledged that "Respondent’s registration of the Domain Name was prior to any of the trademark or service mark registration applications of Complainant." Nevertheless, the Panel found bad faith because "Respondent registered the Domain Name fully conscious of what ‘business’ he could make out of mistakenly being affiliated with the Complainant." Likewise, in Madrid 2012, A.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598, the Panel found that Respondent registered the domain name two days before the Complainant filed the first application for a trademark. The Panel found bad faith on the ground that Respondent sought to "hinder" the registration by the owners of Madrid 2012 and that this constituted registration for "blocking purposes."
Accordingly, the Panel finds that the Complainant has made out a credible and uncontradicted case to the effect that the Respondent has registered and used the Domain Name for the reasons identified within the scope of paragraph 4(b)(i) of the UDRP Policy and/or with the intention of selling the Domain Name to a person for use in a manner described in paragraph 4(b)(iv) of the UDRP Policy. In light of these conclusions, the Panel finds that bad faith registration and use is made out in this case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <galvanize.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: June 26, 2014
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