Powell, LLC v. Aspect Business Services / Chris Powell
Claim Number: FA2012001923461
Complainant is Powell, LLC (“Complainant”), represented by Michael A. Johnson of Kay Griffin, PLLC, Tennessee, USA. Respondent is Aspect Business Services / Chris Powell (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <powell.co>, registered with 1&1 IONOS SE.
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.
Luca Barbero as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 1, 2020; the Forum received payment on December 1, 2020.
On December 2, 2020, 1&1 IONOS SE confirmed by e-mail to the Forum that the <powell.co> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 2020 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@powell.co. Also, on December 3, 2020, 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 December 22, 2020
On December 29, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luca Barbero 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 is an architecture and construction firm based in the United States. Complainant claims rights over the POWELL mark based on its use of the mark in commerce since at least 2009.
Complainant contends that the disputed domain name is confusingly similar to its POWELL mark as it incorporates the mark in its entirety with the mere addition of the country code Top Level Domain “.co”.
Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name since no content has ever been published at the disputed domain name and Respondent has never used the POWELL mark in connection with any goods or services ever since its registration.
Complainant indicates that Respondent registered and is using the disputed domain name in bad faith because Respondent never posted any content at the disputed domain name and has not used the POWELL mark.
Complainant further states that Respondent’s failure to respond to a Complainant’s written request would support a further finding of bad faith.
B. Respondent
Respondent asserts that it has been operating since 1985 and uses his surname POWELL as part of the domain name, to conduct his day-to-day business and for personal use.
Respondent states that, having not provided evidence of trademark registrations or common law rights for the POWELL mark in its complaint, Complainant has failed to demonstrate that it is the rightful owner of the word POWELL.
Respondent underlines that many other companies around the world use the name POWELL and that one in particular also operates in the same field as Complainant and is based in San Francisco, but has been in business since 1992, whilst Complainant stated that it had only been in business since 2009. Respondent thus suggests that in this case Complainant could be considered to be themselves cause for confusion.
Respondent highlights that it is highly unlikely that there could be any confusion between Complainant’s business and his own as they operate in completely different fields of activity. Respondent thus refutes Complainant’s assertion that Respondent has no rights or legitimate interests in the domain name at issue.
Moreover, Respondent states that though there is no website hosted at the disputed domain name, there is a separate domain name under consideration, which is to be used by the Respondent and his family to conduct their day-to-day business.
Lastly Respondent asserts that the Complainant never sent any written request and that, had they done so, the circumstances would have been made clear to them.
Complainant is an architectural, interior design and construction services company, based in Tennessee, United States, and has been active since 2009.
Complainant operates a website at the domain name <powellarchitects.com>, registered on March 3, 2013 and used by Complainant to promote its services under the sign “POWELL Architecture + Building Studio”.
The disputed domain name <powell.co> was registered on September 23, 2011 and is pointed to a parking page with commercial links.
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 that disputed domain name <powell.co> is confusingly similar to the POWELL mark in which Complainant claims to have common law rights, as it reproduces the mark in its entirety with the mere addition of the country code Top Level Domain “.co”.
Whilst common law rights may suffice in lieu of a registered mark under Policy 4(a)(i) if a Complainant is able to establish evidence of secondary meaning in a mark, in the case at hand, the Panel finds that Complainant has failed to demonstrate that the sign POWELL has become a distinctive identifier which consumers associate with Complainant’s services, since Complainant has limited itself to stating that it has been using the POWELL mark since 2009 in connection with its architectural and construction services and provided only a few screenshots of its main website showing a “POWELL ARCHITECTURE + BUILDING STUDIO” logo to substantiate its allegations.
Under Policy 4(a)(i), where there is little to no adequate evidence of trademark registration or secondary meaning in a mark, past Panels have found Complainant’s have not established rights in a mark. See CyberImprints.com, Inc. v. Alberga, FA 100608 (Forum Dec. 11, 2001) (finding that, although the respondent’s domain name <cyberimprints.com> was identical to the complainant’s incorporated business name, the complainant did not claim to hold any trademark or service mark rights in CYBERIMPRINTS or CYBERIMPRINTS.COM, and therefore, its request for transfer was denied); see also CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) (finding Complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant. Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.”).
In view of the above, the Panel finds that the Complainant has failed to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which it has established rights according to paragraph 4(a)(i) of the Policy.
Since, in the Panel’s view, Complainant has failed to demonstrate the requirements set forth in paragraphs 4(a)(i) and 4(a)(iii) of the Policy, it is not necessary to address the issue of Respondent’s lack of rights or legitimate interests in the disputed domain name.
The Panel finds that Complainant has also failed to demonstrate that the disputed domain name was registered and used by Respondent in bad faith.
Indeed, the evidence on records shows that the disputed domain name was registered on September 23, 2011, two years before Complainant registered its domain name <powellarchitects.com>. Notwithstanding the fact that Complainant claims to have first entered into business in 2009, 2 years before the registration of the disputed domain name, Complainant has failed to submit any evidence to substantiate such allegation.
Therefore, based on the records, the Panel finds that Complainant has not proven how the Respondent could have been aware of Complainant and its trademark at the time of registration.
See 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.”); see also 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).
The Panel also finds that there is no element in this case that could demonstrate that Respondent, on balance of probabilities, intended to target Complainant and its trademark through the registration and use of the disputed domain name, as the pay-per-click links displayed on the website published at the disputed domain name are in no way connected to the Complainant’s mark and services.
The Panel further finds that, in view of the circumstances of the case, Respondent has not violated any of the factors listed in paragraph 4(b) of the Policy or engaged in any other conduct that would constitute bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy. See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in 4(b) of the Policy or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith); see also Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under 4(a)(iii) of the Policy).
In view of the above, the Panel finds that Complainant has failed to demonstrate that Respondent registered and used the disputed domain name in bad faith.
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 <powell.co> domain name REMAIN WITH Respondent.
Luca Barbero, Panelist
Dated: January 12, 2021
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