Integrity Marketing Group, LLC v. Sunil Bheda
Claim Number: FA2305002044445
Complainant is Integrity Marketing Group, LLC (“Complainant”), represented by Adam Solander of King & Spalding LLP, District of Columbia, USA. Respondent is Sunil Bheda (“Respondent”), represented by Jason Zedeck of Law Office of Jason Zedeck, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <integrity.com>, registered with GoDaddy.com, LLC. (the “Disputed Domain Name”).
The undersigned certify that each has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Douglas M. Isenberg, Alan L. Limbury, and Kendall C. Reed as Panelists, the last as Chair.
Complainant submitted a Complaint to Forum electronically on May 12, 2023; Forum received payment on May 12, 2023.
On May 15, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <integrity.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 May 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2023, 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@integrity.com. Also on May 18, 2023, 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 7, 2023.
On June 15, 2023, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Douglas M. Isenberg, Alan L. Limbury, and Kendall C. Reed as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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 states the following:
Complainant’s business entails the development and distribution of life and health insurance products and wealth products with carrier partners as well as marketing those products through its distribution network, which includes other large insurance agencies located throughout the country. Complainant currently operates nationwide in the United States, serving over 11 million clients, employing over 6,000 individuals, and helping insurance carriers place billions of dollars in new premiums.
Complainant owns U.S. Patent and Trademark Office Registration No. 6,981,681 for the mark INTEGRITY, and this registration issued on February 14, 2023. Further, and prior to the issuance of this trademark registration, Complainant used the INTEGRITY trademark in commerce since at least as early as 2016 such that common law rights were established since that date.
The Disputed Domain Name is Identical or confusing similar to the INTEGRITY mark.
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant. Respondent has never requested or received any authorization, permission, or license from Complainant to use the mark in any way. There is no evidence in the Whois information to suggest that Respondent is known by the Disputed Domain Name. And Respondent uses the Disputed Domain Name to direct Internet users interested in one of its competitor’s goods and services to its own website site, which is not a legitimate noncommercial or fair use of the domain name.
Respondent registered and is using the Disputed Domain Name in bad faith. Respondent has used the INTEGRITY trademark in the Disputed Domain Name to divert visitors from Complainant to Respondent. Respondent is deemed to have actual and constructive knowledge of Complainant’s trademark rights at the time Respondent registered and began using the Disputed Domain Name, especially in view of Complainant’s federal registration of the mark. Moreover, Respondent has actual knowledge of Integrity’s right in the INTEGRITY trademark but nonetheless continues to use the Disputed Domain Name. Complainant even attempted to enter good faith negotiations for the Disputed Domain Name on several occasions, including in March of 2021, July and August of 2021, January of 2022, February of 2022, and April of 2023.
B. Respondent
Respondent states the following:
Complainant fails to establish the first element of the Policy.
The Disputed Domain Name is similar, but not confusingly similar, to Complainant’s INTEGRITY trademark.
The Disputed Domain Name was registered some 20 years before Complainant’s asserted date of first use and the registration of Complainant’s INTEGRITY trademark.
Complainant fails to establish the second element of the Policy.
Respondent claims its own right to use the Disputed Domain Name because of its own commercial activities in connection with the Disputed Domain Name.
Complainant has not established that it had INTEGRITY trademark rights at the time the Disputed Domain Name was first registered, and that is required. Respondent had every right to register the Disputed Domain Name because it was first in time to do so without having copied anyone else.
By attempting to purchase the Disputed Domain Name from Respondent, Complainant admits that Respondent has a legitimate interest in the Disputed Domain Name. Complainant would not offer to purchase something that Respondent does not have the right to sell.
Complainant’s assertion that its INTEGRITY trademark is famous and distinctive is not correct. There are some 44 US registered trademarks for the word “INTEGRITY” and over 1,000 live U.S. trademark registrations that include the word “INTEGRITY.” The word is one of common and generic usage, and it is certainly not famous.
Complainant fails to establish the third element of the Policy.
None of the circumstances of Policy ¶ 4(b) apply to the facts of this matter.
Respondent never sought to sell, rent, or transfer the Disputed Domain Name to Complainant. Complainant initiated contact with Respondent and attempted to negotiate to purchase the Disputed Domain Name. After having been repeatedly harassed about the matter, Respondent would likely have counter-offered at an extremely high price in an attempt to discourage Complainant’s efforts.
Respondent never attempted to create a likelihood of confusion with Complainant. The Disputed Domain Name is used by Respondent to direct to a website using the domain name <www.lrn.com>, and there is no content at the Disputed Domain Name. There is no reason for any consumer to believe that a website containing a common word is associated with Complainant or any of the other 44 INTEGRITY trademarks and the many hundreds of trademarks that contain the word “INTEGRITY.”
Respondent has not attempted to divert customers from Complainant. Respondent and Complainant are not competitors.
Respondent asks for a finding of Reverse Domain Name Hijacking.
The Disputed Domain Name was registered many years before Complainant acquired either common law trademark rights or a trademark registration for the trademark INTEGRITY. Complainant has attempted to purchase the Disputed Domain Name from Respondent, and failing in this, Complainant has initiated this UDRP action. In doing so, Complainant knew or should have known that it had no chance of prevailing. Further, Complainant is represented by no less than four attorneys and is not an unrepresented party who might not be expected to know the intricacies of the UDRP.
FINDINGS
The Disputed Domain Name was initially created on August 16, 1996.
A US trademark registration was issued for Complainant’s INTEGRITY trademark on February 14, 2023.
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.
To establish this element of the Policy, ¶ 4(a)(i), Complainant must demonstrate that it has rights in a trademark and that the Disputed Domain Name is identical or confusingly similar to the trademark.
Rights in a trademark can be demonstrated by evidence of a trademark registration. See WIPO Overview 3.0, §1.2.
Complainant is the owner of U.S. Reg. No. 6,981,681, issued on February 14, 2023, for the trademark INTEGRITY (“Complainant’s INTEGRITY Trademark”). This establishes the requisite rights.
Whether a trademark is identical or confusingly similar to a Disputed Domain Name is determined by the Panel by way of a simple comparison of the two, and without regard to generic top-level domains (gTLDs) or minor variations. See WIPO Overview 3.0, §1.7.
The Disputed Domain Name is identical to Complainant’s INTEGRITY Trademark, the former being <integrity.com> and the latter being INTEGRITY.
Accordingly, Complainant establishes the first element of the Policy.
Complainant argues that it also has rights in Complainant’s INTEGRITY Trademark by virtue of its use thereof in commerce such that common law trademark rights were established as early as 2016.
Common law trademark rights are sufficient to satisfy the requirements of Policy ¶ 4(a)(i). See WIPO Overview 3.0, § 1.3.
Common law trademark rights arise from use of a mark in commerce such that secondary meaning has been established, the essence of which is a link in the mind of the public between the mark and its source. See AOL LLC v. DiMarco, FA 125978 (Forum Sept 9, 2009) (“’Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature…is to identify the source of the product rather than the product itself.”). See also Jason Hachkowski v. Lucas Barnes, D2009-1800 (WIPO May 2, 2010)(“It is well-established that the first requirement can be satisfied by rights which are not registered, such as “common law” rights... However, a person can only obtain such rights in descriptive terms if they have become distinctive of that person's business through its use of them. To put it another way, a person claiming rights in a descriptive term must show that the term has acquired a secondary meaning denoting its business.”).
In order to demonstrate the existence of common law trademark rights, Complainant must provide sufficient proof thereof to the Panel. Such evidence typically consists of information such as the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys, and media recognition. See Gourmet Dept v. DI S.A., FA 1378760 (Forum June 21, 2011)(“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Significantly, the nature and extent of evidence of secondary meaning depends to a degree on the nature of the mark. The more generic and descriptive the mark, the more evidence is needed. See Jason Hachkowski, supra (“The more descriptive the term, the more extensive must normally be the use, if it is to acquire such a secondary meaning and become distinctive of a particular company. Where a term is highly descriptive, even very extensive use may be insufficient to establish the requisite secondary meaning…”).
In the present matter, Complainant asserts that it has extensive operations, a very extensive list of clients, and has assisted insurance companies in placing billions of dollars in new premiums, but no actual evidence is provided. A declaration from Complainant’s general counsel is provided in which it is asserted that, “This mark is distinctive, well known, and the subject of extensive public recognition and renown, not least because of Integrity’s pervasive use of the mark in interstate commerce for years; Integrity’s consistent, ubiquitous, and careful marketing of the mark; and the mark’s role in building Integrity’s brand as well as its market share in the industry.” However, these are conclusionary statements for which no factual support is provided.
This is not the nature and extent of evidence that is required.
Accordingly, Complainant has not established that it possessed common law trademark rights in Complainant’s INTEGRITY Trademark at any time.
Under the second element of the Policy, ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Name, then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant establishes its prima facie case by demonstrating that Respondent was not authorized to use Complainant’s INTEGRITY Trademark, that Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant, that Respondent has never requested or received any authorization, permission, or license from Integrity to use the Complainant’s INTEGRITY Trademark in any way, that there is no evidence in the Whois information to suggest that Respondent is known by the <integrity.com> domain name. Further, Complainant provides a modicum of evidence that Respondent uses the <integrity.com> domain name to direct Internet users interested in one of its competitor’s goods and services to its own website site, which is not a legitimate noncommercial or fair use of the domain name.
However, Respondent successfully establishes that it does have rights or legitimate interests in respect to the Disputed Domain Name.
Policy ¶ 4(c)(i) states that rights or legitimate interest can be established by demonstrating a use of the Disputed Domain Name in connection with a bona fide offering of services, that is to say a use by a respondent in the ordinary course, for its own purposes, and without any attempt to target a complainant or benefit from the goodwill in the complainant’s trademark.
The Panel finds that Respondent’s use of the Disputed Domain Name meets these criteria.
Respondent uses the Disputed Domain Name to direct to its own website on which it discusses itself and its services, which relate to consulting with respect to ethics and compliance programs. Some of the statements appearing on Respondent’s website include:
“Close the gap between compliance and culture with an end-to-end ethics and compliance management platform.”
“How effective is your ethics and compliance program.”
“LRN is helping these leading brands create ethically-aware and inspired workforces.”
Complainant’s business is otherwise involved with the development and distribution of life and health insurance products and wealth products.
Because Respondent and Complainant are in different lines of business, it would not make sense for Respondent to attempt to trade on the goodwill of Complainant’s INTEGRITY Trademark. There would be no benefit to Respondent in doing so.
It might be different if Complainant’s INTEGRITY Trademark were famous such that there was an almost unavoidable connection between the mark and Complainant, in which event Respondent’s denial of targeting would be difficult to accept, but this is not the case. As Respondent points out, the word “integrity” is the subject of 44 U.S. trademark registrations and is a part of approximately 1,000 other U.S. trademark registrations, meaning that Complainant’s INTEGRITY Trademark is at the opposite end of the spectrum from being a famous mark.
Additionally, the word “integrity” is a dictionary word. Respondent’s intention is far more likely to be an effort to employ the generic and descriptive aspects of the word. The Policy cannot be used to capture the exclusive use of a generic and descriptive word with respect to domain names in all circumstances. See EAuto, L.L.C. v EAuto Parts, D2000—0096 (WIPO April 9, 2000) (<eautoparts.com>. “The weakness of the EAUTO Trademark makes it difficult for Complaint to argue that Respondent lacks a legitimate interest in the domain name eautoparts.com. That is because this domain name eauroparts.com is descriptive of a business that offers, through the Internet, information about or sales of automobile parts, and it is inappropriate to give Complainant a wide monopoly over all domain names, even descriptive ones, that incorporate the mark EAUTO.”).
Accordingly, Complainant has failed to establish the second element of the Policy.
Registration and Use in Bad Faith
The purpose of the Policy is to address the problem of cybersquatting, which is, briefly stated, the intentional bad faith registration and use of a domain name that is the same or confusingly similar to another’s trademark, and a key aspect of cybersquatting is this intentionality. Further, the requisite intention must exist both at the time the Disputed Domain Name is registered and when it is later used. See Testra Corporation, Ltd v. Nuclear Marshmallows, D2000-003 (WIPO Feb. 18, 2000) (“The significance of the use of the conjunction “and” is that paragraph 4(a)(iii) requires the Complainant to prove use in bad faith as well as registration in bad faith.”); see also Bio Clin B.B. v. MG U.S.A., D2010-0046 (Mar. 22, 2010) (“The Panel accepts the Respondent’s submission that a complaint under the Policy must prove both bad faith registration and bad faith use.”); see also 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.”).
This being the case, and as a simple matter of logic, without prior knowledge of another’s nascent trademark rights, a domain name registrant cannot, at the time a domain name is registered, intend to cybersquat on a trademark before the trademark exists. See WIPO Overview 3.0, § 3.8.1, which reads in pertinent part: “[W]here a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”; see also 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 Complaint introduced the ALTA MOTORS mark in commerce. Respondent therefore cannot have entertained bad faith intentions respecting the mark because it could not have contemplated Complaint’s then non-existing rights in [the mark] at the moment the domain name was registered.”).
In the present matter, the relevant Whois record shows that the Disputed Domain Name was initially created in 1996.
The U.S. trademark registration certificate for Complaint’s INTEGRITY trademark shows that the mark was registered on February 14, 2023.
Even if one were to take September 8, 2020, as the date of creation of the Disputed Domain Name, this would still pre-date the creation of Complainant’s trademark rights by several years. (As stated above, despite Complainant’s assertion of common law rights in the INTEGRITY Trademark as of an earlier date, this has not been established.) This date of September 8, 2020, is mentioned because a declaration provided by Respondent herein suggests that the Disputed Domain Name may have been transferred on this date, although the precise sequence of events is not entirely clear. (Some panels have held that a transfer of a domain name can trigger a new creation date for purposes of a bad faith analysis.)
As such, it would not have been possible for the Respondent to have had the requisite intention at the time the Disputed Domain Name was created.
Accordingly, the Panel finds that Complainant has failed to establish the third element of the Policy.
Reverse Domain Name Hijacking
Respondent alleges that this UDRP proceeding was filed by Complainant in bad faith and that by bringing this UDRP proceeding Complainant is attempting to commit Reverse Domain Name Hijacking (“RDNH”).
The principle of RDNH is defined in Paragraph 1, Definitions, of the UDRP Rules as: “…using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rule 15(e) further provides: “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…, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes as abuse of the administrative proceeding.”
The WIPO Overview 3.0 addresses the subject of RDNH in §4.16. The following considerations expressed there are relevant. Firstly, and as an initial matter, it is important to note that the conduct calling for the censure of RDNH is not a mere lack of success, offering weak arguments, or even having misguided beliefs. And secondly, the reasons articulated by panels supporting a finding of RDNH include “…clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights…” (emphasis supplied). See also Faster, supra.
In the present matter, Complainant is not merely unsuccessful, but it clearly knew that the Disputed Domain Name was registered long before Complainant acquired trademark rights and as such could not establish bad faith conduct on the part of Respondent; these facts were readily apparent from the Whois record (a copy of which was included in the record by Complainant) and the date of the U.S. trademark registration of the Complainant’s INTEGRITY trademark.
Accordingly, the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
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 <integrity.com> domain name REMAIN WITH RESPONDENT.
Douglas M. Isenberg, Alan L. Limbury, as Panelists, and Kendall C. Reed as a Panelist and Chair
Dated: June 26, 2023
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