The Guitammer Company v. Herschel Thompson
Claim Number: FA2108001958918
Complainant is The Guitammer Company (“Complainant”), Ohio, USA. Respondent is Herschel Thompson (“Respondent”), represented by Roberto Ledesma of Lewis & Lin, LLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buttkicker.com>, registered with Godaddy.Com, Llc.
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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2021; the Forum received payment on August 10, 2021.
On August 11, 2021, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <buttkicker.com> domain name is registered with Godaddy.Com, LLC and that Respondent is the current registrant of the name. Godaddy.Com, LLC has verified that Respondent is bound by the Godaddy.Com, Llc 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 August 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 2, 2021 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@buttkicker.com. Also on August 13, 2021, 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 August 26, 2021.
On August 31, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert 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. Respondent requests that such relief be denied and that Complainant be found to have engaged in reverse domain-name hijacking.
A. Complainant
Complainant is in the business of consumer electronics and apparel. Complainant has rights in the BUTTKICKER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. 2,782,124, registered Nov. 11, 2003). Respondent’s <buttkicker.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety, adding only the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <buttkicker.com> domain name. Respondent inactively holds the disputed domain name’s resolving website.
Respondent registered and uses the <buttkicker.com> domain name in bad faith.
B. Respondent
Respondent has rights and legitimate interests in the disputed domain name. Respondent registered the <buttkicker.com> domain name to promote his father’s smoking cessation product.
Respondent did not register and does not use the <buttkicker.com> domain name in bad faith. Respondent has not tried to sell the disputed domain name to Complainant, has not engaged in a pattern of bad faith registration and use, and has not disrupted Complainant’s business for commercial gain. Respondent’s current non-use of the disputed domain name is insufficient to demonstrate bad faith in the absence of any other findings of bad faith. Respondent registered the disputed domain name years before Complainant first claimed rights in the BUTTKICKER mark. Complainant has failed to establish any form of bad faith. This, combined with its scant and inadequate Complaint, back a finding of reverse domain name hijacking.
The Panel notes that the <buttkicker.com> domain name was registered on Sept. 30, 1996.
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 claims rights in the BUTTKICKER mark through its registration with the USPTO (e.g. 2,782,124, registered Nov. 11, 2003). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Spotify AB v. Olodo Glory / Sutherland, FA 2106001951577 (Forum July 15, 2021) (“Complainant’s registration of the SPOTIFY mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Respondent argues that it has rights and legitimate interests in the <buttkicker.com> domain name. Under Policy ¶¶ 4(c)(i) and (iii), where words in a disputed domain name can have generic and/or multiple uses or meanings, past panels have found evidence of a bona fide offering of goods or services or legitimate noncommercial or fair use. See Russell & Miller, Inc. v. Dismar Corp., FA 353039 (Forum Dec. 20, 2004) (finding that the respondent used the <salesigns.com> domain name for a bona fide offering of goods or services, which was established by the respondent’s “longstanding involvement in the ‘sale sign’ market and its use of a descriptive domain name to further its competition in that market”). Furthermore, past panels have found that a Respondent need not be actively using a disputed domain name where it is registered and used pursuant to a right or legitimate interest. See Casual Corner Group, Inc. v. Young, FA 95112 (Forum Aug. 7, 2000) (finding that the respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the complaint); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding rights and legitimate interests in the domain name where the respondent sought to develop a bona fide business use for the domain name). Here, Respondent argues that it registered and planned to use the domain name in connection with a smoking cessation program developed by Respondent’s father, and provides multiple documents as evidence, including an expired USPTO application and online description of the program/device. Respondent argues that the domain name aligns with this purpose, as the word “butt” can refer to a cigarette butt, while “kicker” refers to the common phrase of quitting smoking by “kicking” the habit. Therefore the Panel finds that Respondent has rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant offers no evidence sufficient to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). 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 July 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 notes that Respondent’s registration of the <buttkicker.com> domain name predates Complainant’s first claimed rights in the BUTTKICKER mark. In such circumstances, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum June 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.”); see also 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.”).
Further, as stated in the previous section, Respondent has rights or legitimate interests in the <buttkicker.com> domain name pursuant to Policy ¶ 4(a)(ii). Therefore, the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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); see also 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).
Finally, Respondent argues that its current lack of active use of the <buttkicker.com> domain name’s resolving website is insufficient to demonstrate bad faith. Under Policy ¶ 4(a)(iii), in the absence of other factors such as attempting to sell the disputed domain name to Complainant, engaging in a pattern of bad faith, or attempting to disrupt a Complainant’s business or attract internet users using Complainant’s goodwill in a mark, simply not using a disputed domain name does not amount to a bad faith use. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith). Here, Complainant’s inability to prove any bad-faith registration or use under Policy ¶ 4(b), along with Respondent’s plausible stated purpose in registering the disputed domain name years before Complainant’s claimed rights in the mark, is evidence that its current use of the domain name is not in bad faith. Therefore, the Panel finds Respondent is not using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent alleges that Complainant has engaged in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <buttkicker.com> domain name, of its rights to use the disputed domain name.
Respondent argues that Complainant’s limited and inadequate complaint, combined with its inability to prove any bad faith circumstances, and the fact that Respondent registered the disputed domain name years before Complainant claims rights in the mark demonstrate its intention to wrest the domain name unfairly from Respondent.
The Panel finds that Complainant knew or should have known that it was unable to prove either that Respondent lacks rights or legitimate interests in the <buttkicker.com> domain name or that Respondent registered and is using the disputed domain name in bad faith. The most glaring evidence for this conclusion is that the Domain Name was registered a decade before Complainant’s trademark rights came into existence. It is logically impossible for the registration to have been made with the intent to infringe on trademark rights that did not yet exist. Accordingly, the Panel finds that reverse domain name hijacking has occurred. See 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 two of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. The Panel further finds that Complainant has engaged in reverse domain-name hijacking.
Accordingly, it is Ordered that the <buttkicker.com> domain name REMAIN WITH Respondent.
Michael A. Albert, Panelist
Dated: September 13, 2021
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