Redactable Inc. v. James Robinson
Claim Number: FA2110001967310
Complainant is Redactable Inc. (“Complainant”), represented by Craig A. Beaker of Perkins Coie, Colorado, USA. Respondent is James Robinson (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <redactable.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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 1, 2021; the Forum received payment on October 4, 2021.
On October 4, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <redactable.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 name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 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@redactable.com. Also on October 7, 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 October 7, 2021.
On October 8, 2021, an Additional Submission was received from Complainant and determined to comply with Supplemental Rule 7. On October 13, 2021, an Additional Submission was received from Respondent and determined to comply with Supplemental Rule 7. Both Additional Submissions will be considered by the Panel.
On October 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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 provides a cloud-based software service that allows businesses to permanently redact documents. In furtherance of its business, Complainant operates under its service mark, REDACTABLE, which is registered with the United States Patent and Trademark Office (“USPTO”), and through its registered domain name <redactable.co> (first registered on March 23, 2018).
- The disputed domain name, <redactable.com>, is identical and/or confusingly similar to Complainant's REDACTABLE service mark as it wholly incorporates the mark and merely adds the “.com” generic top-level domain (“gTLD”).
- Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not permitted Respondent to use the REDACTABLE mark for any purpose. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to redirect internet users to the website of a company, PaperFree Corporation, for which he serves as president. That company offers software for automating document redaction processes, which competes directly with the services offered by Complainant.
- Respondent registered and uses the disputed domain name in bad faith. Complainant's mark is well known, and Respondent was aware of it before registration of the disputed domain name, as the mark had been in use for several years before that registration. Respondent's initial use of the disputed domain name to redirect web traffic to his own competing website was to intentionally gain commercially through a falsely suggested connection with Complainant. Respondent's current deactivation of the disputed domain name does not negate its bad faith registration and use.
B. Respondent
- The disputed domain name is not confusingly similar to Complainant's service mark since it consists of a generic term.
- Respondent uses the disputed domain name to offer internet users redaction goods and services. The disputed domain name is composed of a generic term that refers directly to those services. Respondent has been in this business since 2008, many years before Complainant's origin or the registration of Complainant's service mark.
- Respondent registered and uses the disputed domain name in good faith as a generic name that connects with its legitimate business offerings. Those offerings differ from Complainant's offerings in that Complainant's services rely on cloud-based software and Respondent's services do not. Thus, there is little chance of confusion between Complainant's and Respondent's offerings.
- Complainant passed on the opportunity to buy the disputed domain name from a third party for the price of US$2,195. Moreover, Respondent has temporarily disabled the disputed domain name in good faith with respect to the resolution of this proceeding.
C. Complainant's Additional Submission
- Complainant's registration with the USPTO is valid and must be recognized as such under the Policy.
- Respondent may have a legitimate business, but that does not mean that he can use a domain name that duplicates a valid service mark owned by another entity to further the operations of that business, as is the case under consideration here.
- The differences, as alleged by Respondent, between the offerings of the parties hereto and the failure of Complainant to pay an exorbitant price for the disputed domain name during Complainant's start-up phase are irrelevant under the Policy.
D. Respondent's Additional Submission
- As of October 12, 2021, Respondent has terminated its lease of the disputed domain name. The Lessor claims that the disputed domain name will not be leased to any other entity, but will be offered for sale at the price of US$2,950.
Complainant is a United States company that markets cloud-based software services that allow businesses to permanently redact documents. Complainant conducts its operations under the REDACTABLE service mark, which is registered with the USPTO (i.e., Reg. No. 5,922,740; registered Nov. 26, 2019).
Respondent acquired the disputed domain name, <redactable.com>, on or about September 2, 2021, some years after it was first registered on March 22, 2016. Respondent first connected the disputed domain name to Respondent's company website, which offers software that is promised to provide, inter alia, redaction services. Subsequently, Respondent terminated that connection so that the disputed domain name is presently inactive.
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.
In line with Complainant's presentation of a valid service mark registration with the USPTO for the REDACTABLE mark, the Panel concludes that Complainant has sufficient ownership rights in that mark to satisfy Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i).”); see also DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel views the disputed domain name, <redactable.com>, as identical to the REDACTABLE service mark because the lettering is exactly the same except for the added “.com” gTLD, the latter being irrelevant for such a comparison under the Policy. Respondent's contention that the disputed domain name is not confusingly similar to that service mark because the mark is a generic, descriptive or common term is without merit, since that consideration is not relevant in a Policy assessment of the similarity between a disputed domain name and a valid mark. See Tupelo Honey Hospitality Corp. v. Reggie King, FA 1732247 (Forum July 6, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (“Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name ‘.com.’”).
As a result, the Panel finds that Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.
The Panel notes that it has been well established per prior UDRP decisions that a complainant must first make a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to that respondent to show that it does have rights or legitimate interests. See Neal & Massey Holdings Ltd. 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”); see also Advanced International Marketing Corp. v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011).
In this case, Complainant has demonstrated above that the disputed domain name is identical to its REDACTABLE service mark and contends forcefully that it has never given Respondent permission or license to use that mark for any purpose. Ergo, the Panel concludes that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
In rebuttal to that prima facie case, Respondent contends that initially it was using the disputed domain name, per Policy ¶ 4(c)(i), “in connection with a bona fide offering of goods and services” by attaching it to Respondent's website that offers products designed for redaction of documents. However, the Panel notes that Complainant is itself in that business of redaction and that many previous UDRP panels have found that, where a disputed domain clearly duplicates a complainant's valid existing service mark, using that name to redirect internet users to a respondent's own competing website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“Past panels have decided that a respondent’s use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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 Summit Group, LLC. v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006). The Panel believes that those precedents should apply in the present case.
Furthermore, both Complainant and Respondent agree that the disputed domain name is currently inactive. The Panel finds that this inactivity also fails to establish any sort of rights or legitimate interests in the disputed domain name. See Morgan Stanley v. Francis Mccarthy, FA 1785347 (Forum June 8, 2018) (“Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”); see also TMP International, Inc. v. Baker Enterprises, FA 204112 (Forum Dec. 6, 2003) (“...the Panel concludes that Respondent’s passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Finally, the Panel detects no evidence in the record to suggest that Respondent, James Robinson, or his company, PaperFree Corporation, have ever been commonly known as <redactable.com>, so Policy ¶ 4(c)(ii) is inapplicable to this case as well.
Therefore, the Panel concludes that Respondent has failed to rebut Complainant's prima facie case and thus that case must prevail in this proceeding.
As a result, the Panel finds that Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that, as Complainant and Respondent conduct similar redaction businesses, Respondent was well aware of Complainant and its service mark before registration of the disputed domain name. Accordingly, Complainant argues that Respondent registered and is using the disputed domain name in bad faith to disrupt Complainant's operations and to gain commercially through confusion between Complainant's mark and the disputed domain name's redirection to Respondent's own website. The Panel is inclined to agree with Complainant as to these contentions and arguments, and finds that the disputed domain name was registered and is being used in bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA 1761403 (Forum Dec. 29, 2017) (“Use of a disputed domain name to divert Internet users from a complainant’s website to a respondent’s competing website can evince a finding of bad faith per Policy ¶ 4(b)(iii) [...] Use of a disputed domain name to create confusion as to the affiliation of a complainant with the respondent’s competing website in question can support a finding of bad faith per Policy ¶ 4(b)(iv).”); see also OneWest Bank N.A. v. Matthew Foglia, FA 1611449 (Forum Apr. 26, 2015) (“Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <financialfreedomcompany.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
As noted above, Complainant and Respondent concur that the disputed domain name is not now linked to an active website. However, passive ownership of a disputed domain name, temporarily or not, does not prevent a finding of registration and use of a disputed domain name in bad faith. See State Farm Mutual v. Dr. Keenan Cofield, FA 1799574 (Forum Sept. 10, 2018) (“Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii).”).
As a result, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <redactable.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: October 26, 2021
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