Trevor Meier v. Jan David
Claim Number: FA1909001860398
Complainant is Trevor Meier (“Complainant”), represented by Trevor Meier of 5770 SW Salmon St, Oregon, USA. Respondent is Jan David (“Respondent”), represented by Mary Beth Hasty, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <globalpickleballnetwork.com>, registered with Name.com, Inc.[i]
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on September 3, 2019; the Forum received payment on September 3, 2019.
On September 3, 2019, Name.com, Inc. confirmed by e-mail to the Forum that the <globalpickleballnetwork.com> domain name (the Domain Name) is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 September 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of October 4, 2019 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@globalpickleballnetwork.com. Also on September 10, 2019, 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 October 4, 2019.
On October 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 uses the GLOBAL PICKLEBALL NETWORK mark in connection with computer services, namely, creating an online community and providing a website that enables users to arrange pickleball games. Complainant has rights in the GLOBAL PICKLEBALL NETWORK mark through its trademark registration with the United States Patent and Trademark Office (“USPTO “) (Reg. No. 5,853,608, registered September 3, 2019; filed September 27, 2018). Respondent’s <globalpickleballnetwork.com> domain name is identical to Complainant’s GLOBAL PICKLEBALL NETWORK mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent uses the Domain Name only to redirect users to its own website, <pickleball.global>. The Domain Name does not match any of Respondent’s current trademarks or service marks. Furthermore, Respondent’s Domain Name does not correspond with any of the goods or services provided by Respondent.
Respondent registered and uses the Domain Name in bad faith. Respondent uses the Domain Name only to redirect users to its own website. Respondent registered and is using the Domain Name either to create confusion with Complainant’s own domain name, <globalpickleballnetworks.com> or to keep it from being used in the future. Furthermore, Respondent refuses to sell the Domain Name to Complainant as it sees Complainant as a competitor.
B. Respondent
Respondent is the Manager of ABC Finance, LLC, which is in the business of providing online social networks to allow pickleball players to connect with one another, find available courts, and host tournaments. Respondent registered the Domain Name on March 29, 2016, nearly two and a half years before Complainant began using the GLOBAL PICKLEBALL NETWORK mark. Respondent is the owner of the PICKLEBALL GLOBAL mark, through its common law rights and trademark registration with the USPTO (Reg. No. 5,671,637, registered February 5, 2019; filed March 14, 2017).
Respondent has rights in the PICKLEBALL GLOBAL mark and the Domain Name. Respondent registered the Domain Name two and a half years before Complainant began using its GLOBAL PICKLEBALL NETWORK mark. Respondent is also commonly known by the Domain Name as it incorporates its business name, PICKLEBALL GLOBAL. Furthermore, Respondent uses the Domain Name for a bona fide offering of goods or services, namely, providing pickleball-networking services. Complainant attempted to purchase the Domain Name from Respondent, who refused Complainant’s offer.
Respondent did not register and does not use the Domain Name in bad faith. Complainant did not have any trademark rights in the GLOBAL PICKETBALL NETWORK mark at the time Respondent registered the Domain Name. Respondent did not attempt to sell the Domain Name. In fact, it refused Complainant’s offers to buy it. Respondent did not register the Domain Name in order to prevent Complainant from reflecting its mark in a corresponding domain name, as Complainant had no rights in that mark when Respondent registered the Domain Name. Respondent did not register the Domain Name to disrupt Complainant’s business because Complainant’s business did not exist at the time the Domain Name was registered. Respondent is and has been using the Domain Name to promote its own business since before Complainant ever began its business or registered his mark. Complainant knew of Respondent and its use of the Domain Name before he began using the GLOBAL PICKLEBALL NETWORK mark for his business.
Complainant has brought and maintained this proceeding in bad faith and is guilty of Reverse Domain Name Hijacking (“RDNH”).
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(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.
The Panel finds as follows with respect to the matters at issue in this proceeding:
The GLOBAL PICKLEBALL NETWORK mark was registered to an entity named Global Tennis Network, LLC with the USPTO (Reg. No. 5,853,608) on September 3, 2019. Amended Complaint Annex. There is no indication in the record of any assignment of that mark from Global Tennis Network LLC to Complainant, but Complainant alleges that that is his service mark, and the street address given in the USPTO registration certificate for Global Tennis Network LLC is the same as that shown for Complainant in the Complainant. Under these circumstances, the Panel concludes that Complainant has rights in the USPTO registration of the GLOBAL PICKLEBALL NETWORK mark. A complainant’s registration of a mark with the USPTO is sufficient to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <globalpickleballnetwork.com> Domain Name is identical or confusingly similar to the GLOBAL PICKLEBALL NETWORK mark. It incorporates that mark verbatim, merely adding the “.com” generic top-level domain (“gTLD”). This change is not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at ¶ 1.7, states that the test for confusing similarity “typically 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 domain name.” Notwithstanding the change described above, Complainant’s mark is clearly recognizable within the Domain Name, and this establishes its confusing similarity to Complainant’s mark.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the GLOBAL PICKLEBALL NETWORK mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable 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; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent uses the Domain Name only to redirect users to its own website, <pickleball.global>, (ii) the Domain Name does not match any of Respondent’s current trademarks or service marks, and (iii) the Domain Name does not correspond with any of the goods or services provided by Respondent. Complainant does not relate any of these allegations specifically to the indicia of rights or legitimate interests articulated in Policy ¶ 4(c), but the Panel takes his claims to be that Respondent is not commonly known by the Domain Name, and that the Respondent is not using the Domain Name for a bona fide offering of goods or services because the only use he makes of the Domain Name is to redirect visitors to his web site at <pickleball.global>. These allegations are addressed as follows:
Complainant offered no evidence in support of his allegations and thus failed to present a prima facie case on the rights or legitimate interests element of his case. Nevertheless, there is evidence in the record that enables the Panel to rule on the merits of the claim and because Respondent has requested a finding of reverse domain name hijacking the Panel elects to do so. Respondent admits that the Domain Name automatically redirects Internet users to the web site resolving from his primary domain name <pickleball.global>, but shows that he registered the Domain Name on March 29, 2016 (Exhibit 3, WHOIS report), about a year after he started his pickleball network operations under the name PICKLEBALL GLOBAL, and has been using the Domain Name in this fashion since 2016 (Declaration of Jan David, Exhibit A to Response). Respondent registered the trademark PICKLEBALL GLOBAL with the USPTO (Reg. No. 5,671,637) on February 5, 2019. The USPTO registration certificate shows an application date of March 14, 2017 and first use date of March 2015 (Response Exhibit 10). Respondent Exhibit 2 is a screenshot of his web page. Featured prominently at the top of the page is the message “Welcome to the Global Pickleball Network,” and the contents of the site fully corroborate his allegations that he uses the site to provide an online social network to allow pickleball players to connect, to show available courts, provide pickleball tips and news, and host pickleball tournaments. Respondent states that he registered a number of other domain names that are a transposition of terms in his PICKLEBALL GLOBAL mark (Response Exhibit A).
As noted above, Complainant’s GLOBAL PICKLEBALL NETWORK was registered with the USPTO on September 3, 2019. The USPTO registration certificate states an application date of September 27, 2018 and a date of first use of September 23, 2018 (Amended Complaint Annex), which is almost eighteen months after Respondent registered the Domain Name. When the Domain Name was registered there was nothing that might preclude him from registering this Domain Name, especially since it is so clearly descriptive of the business or undertaking for which Respondent uses it. These circumstances have been held by UDRP panels to be evidence of rights or legitimate interests in a domain name. High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (“A domain name holder can be said to have rights and legitimate interests in a disputed domain name when it registered the domain name prior to the complainant obtaining the trademark that it relies on, provided it uses the domain name legitimately), citing 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.”).
Further, while Respondent registered the mark PICKLEBALL GLOBAL, his web site and Facebook page also identify his operation as “A Global Pickleball Network” (Response Exhibits 2 and 5) and have done so since 2016. Thus, while Respondent may not have trademark rights in the name “Global Pickleball Network” as such, that tag has become associated with his operation and it is fair to say that he has been commonly known by that name.
For the reasons discussed above, the Panel finds that Respondent has demonstrated rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product or service on the respondent’s web site or location.
Complainant alleged a number of factors he says demonstrate bad faith registration and use, but he submitted no evidence in support of any of them. He thus failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”), Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Most compelling on the issue of bad faith, however, is the undisputed fact that Respondent registered the Domain Name almost 18 months before Complainant acquired any rights in the GLOBAL PICKLEBALL NETWORK mark, which would have been September 27, 2018 when he applied to the USPTO for registration of that mark (Amended Complaint Annex). UDRP panels have consistently held that a complainant cannot prove registration of a domain name in bad faith within the meaning of Policy ¶ 4(a)(iii) when the registration occurred before the complainant acquired rights in its mark, as the Policy requires a showing of bad faith registration and use. Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”), Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
Finally, since Respondent has rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii), he cannot be held to have registered or used it in bad faith. Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name), Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
For the reasons discussed above, the Panel finds that Respondent did not register and has not used the Domain Name in bad faith.
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Reverse domain name hijacking is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rule 15(e) provides as follows:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complainant is not represented by legal counsel in this proceeding but the evidence of bad faith in bringing this action is compelling and even a person not familiar with UDRP practice should have known that doing so was fundamentally wrong. In August of 2018, one year before bringing this case, Complainant called Respondent to tell him that he was planning to start a business called “Global Pickleball Network” and requested Respondent to sell him the Domain Name. Respondent refused, explaining that he had been using the Domain Name in connection with his operations for several years and wanted to continue to do so. At that point, Complainant became aggressive and informed Respondent that he planned to start his business under the name mentioned, that he would obtain a trademark registration for it, and force Respondent to turn the Domain Name over to him (Response Exhibit A). Complainant then took those actions, with full knowledge of Respondent’s business and his rights in the Domain Name. Respondent notes that one year later, when the USPTO registration was issued, Complainant filed this proceeding the same day. Respondent also notes that one of the grounds for a finding of bad faith alleged by Complainant is that Respondent refused to sell the Domain Name to Complainant for any amount of money. This is just the reverse of the circumstance articulated in Policy ¶ 4(b)(i). It is clear that, for whatever reason, Complainant believes himself entitled to the Domain Name and initiated this proceeding to obtain it, without regard for any of the requirements imposed by the Policy.
Complainant knew or should have known that he would be unable to prove that Respondent lacked rights or legitimate interests in the Domain Name or that Respondent registered and was using the Domain Name in bad faith. This meets well-established criteria for a finding of reverse domain name hijacking. 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.”), 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”).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <globalpickleballnetwork.com> Domain Name REMAIN WITH Respondent.
The Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Charles A. Kuechenmeister, Panelist
October 11, 2019
[i] Respondent listed this domain name and the additional domain name <globalpickleballnetworks.com> in the caption of its Response as being in dispute in this proceeding. The only domain name involved in this proceeding is that named in the Complaint, being <globalpickleballnetwork.com>.
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