Monument Traders Alliance, LLC v. Nicholas Thomas / Thrift Technologies
Claim Number: FA2307002053092
Complainant is Monument Traders Alliance, LLC (“Complainant”), represented by Benjamin W. Janke, Louisiana, USA. Respondent is Nicholas Thomas / Thrift Technologies (“Respondent”), represented by Kyle Scudiere of SOLACE LAW, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thewarroom.ag>, 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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to Forum electronically on July 13, 2023; Forum received payment on July 13, 2023.
On July 14, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <thewarroom.ag> 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 July 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@thewarroom.ag. Also on July 19, 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 August 10, 2023.
Complainant and Respondent filed Additional Submissions on August 21, 2023, and August 22, 2023, respectively, both of which complied with Supplemental Rule 7.
On August 14, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Calvin A. Hamilton as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that among other intellectual property holdings, Monument Traders Alliance is the owner of common law rights to THE WAR ROOM trademark and the design mark, including the knight chess piece, (collectively, the “THE WAR ROOM Trademarks”), in connection with the collaborative trading platform and its related products. Complainant contends that the THE WAR ROOM has used each of these marks since at least as early as March of 2019. In addition, THE WAR ROOM operates a website at the domain name which is very similar to the Infringing Domain (both operating under the name “the war room”).
Complainant contends that because its THE WAR ROOM trademark has acquired secondary meaning and because its use of these marks predates the registration of the Infringing Domain, it has common law rights under the Policy.
Complainant adds that Respondent has registered the Infringing Domain and is using the Infringing Domain in association with almost identical goods and services to those offered by Complainant. Also, the Respondent’s typeset logo and distinguishing chess piece logo are remarkably similar to Complainant’s logo.
Complainant states that Respondent’s association with a controversial influencer constitutes dilution by tarnishment of Complainant’s THE WAR ROOM trademark.
Complainant also states that Respondent is using a privacy shield to mask its identity. Complainant continues that Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. The WHOIS record omits any information for the Registrant’s name and any contact information.
Complainant alleges that Respondent has no rights to legitimately use the disputed domain name because the Respondent’s Domain Name is Identical and Confusingly Similar to Complainant’s THE WAR ROOM Mark.
Additionally, Complainant asserts that Respondent has no rights or legitimate interest in the disputed domain name and that Respondent has registered and is using the infringing domain in bad faith.
B. Respondent
Respondent claims that its disputed domain name is not identical or confusingly similar to a Trademark or Service mark in which the Complainant has rights. Respondent asserts that Complainant does not own any United States registered trademarks or other global registered trademarks in direct or similar conflict to the domain name at issue.
Further, Respondent refutes Complainant’s assertions that it has developed common law rights vested in the domain name at issue and that those rights have developed secondary meaning.
Respondent states that it has rights and a legitimate interest in the domain name at issue because the Respondent is making a legitimate fair use of the domain name at issue without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark that Complainant claims it holds rights in.
Respondent claims that its brand and Complainant’s brand do not operate with the same function or provide the same purpose in service and that its use of the domain and its related content offerings have been commonly known to the public.
Respondent asserts that it registered the domain name in good faith and continues to use it in good faith. Further that Complainant has failed to satisfy any of the requirements under the Policy which constitute evidence of Respondent’s bad faith.
C. Additional Submissions
Both Parties timely filed Additional Submissions according to the Forum’s
Supplemental Rule 7 which will be considered by the Panel.
1) Complainant
Complainant reiterates that it is the owner of common law rights in and to THE WAR ROOM trademark and that due to continuous use since March 2019, the mark has acquired secondary meaning. Further, that Complainant’s use predates the registration of the Infringing Domain.
Complainant restates that the domain name should be transferred because Respondent has no legitimate right to use it.
2) Respondent
Respondent asserts that Complainant’s Supplemental Reply Brief is unsolicited and should not be considered.
Respondent asserts that Complainant’s allegations that “THE WAR ROOM” has acquired secondary meaning is without merit and rests on a foundation of conclusory statements. Respondent states that Complainant has provided no evidence for which the Panel can make an informed judgement as to the acquired distinctiveness of Complainant’s claimed common law rights, nor has Complainant presented any public information to verify Complainant’s sales, data and metrics claims and that void of evidence is fatal to Complainant’s claim of common law right. The Respondent believes that the Declaration of Mr. Ryan Fitzwater is an attempt to enter new claims into the record but which, nevertheless, falls short of probatory value in establishing common law rights.
Respondent asserts that Complainant’s rejected and abandoned United States Trademark application for the “The War Room” is prima facia proof that the mark is not capable of obtaining acquired distinctiveness.
Respondent advances that Complainant had the opportunity to purchase the domain name at issue years before Respondent and did not do so. In addition, Complainant has been continuously operating under warroomtrader.com and only now is pursuing this domain after having its United States Trademark application rejected. Respondent believes that those facts alone create yet another clear contradiction in Complainant’s overall position.
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 asserts that it holds common law rights in the THE WAR ROOM Marks and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).
To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Secondary meaning is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since “[a] mark can generate a secondary meaning sufficient to establish Complainant’s rights when consistent and continuous use of the mark has created distinctive and significant good will… Complainant has published under the KAREN KOEHLER name extensively, and Complainant’s legal skills have been recognized by various organizations and groups with extensive positive media coverage. Complainant also operates an online blog associated with the KAREN KOEHLER mark.”), Gourmet Depot 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.”).
The complainant must also show that the name has become a distinctive identifier associated with the complainant or its goods and services. Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint. See T.W. Clark Construction, LLC v. Willa Kinn, D2019-1216 (WIPO Aug. 21, 2019) ("Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning."); Broadband Voice, LLC
v. Nilay N. Patel FA 1582384 (Forum Nov. 12, 2014) (“…Although Complainant offers evidence of the variety which might be used to persuade a panel that Complainant has common law rights in the BROADBANDVOICE mark, such mark is clearly highly descriptive. Where a claimed trademark is descriptive, the burden on a UDRP complainant to show that its mark has acquired secondary meaning is great.”). See TimeWorks, LLC v. Shadwan Swed, FA 1519030 (Forum Oct. 15, 2013) (stating “where the claimed mark is comprised of descriptive or dictionary words, Complainant has a greater onus to present compelling evidence of secondary meaning or distinctiveness.”).
Complainant provides information at Exhibits 3 and 5 of its Complaint to demonstrate use of THE WAR ROOM Marks and to support its claims to common law rights in the trademarks. In its Supplemental Reply Brief, Complainant provides the Declaration of Ryan Fitzwater, Associate Publisher of Complainant, as evidence of sales, promotional expenses, subscription, user metrics and earnings.
Respondent argues that Complainant has failed to submit any degree of persuasive evidence necessary to establish common law and reputational rights in the domain at issue. Respondent reminds the Panel that it is important to note that Complainant operates under warroomtraders.com and could have purchased <thewarroom.ag> before Respondent. See Response at page 5.
Respondent contends that Complainant makes unsupported and unevidenced conclusory statements and provides third-party review blogs to base its secondary meaning assertion.
Respond states that the only evidence provided that could be related to Complainant’s use of the term “THE WAR ROOM” is provided in Complainant Exhibit 5, which are copies of industry websites referencing Complainant’s domain “warroomtrader.com” and product offerings. Further, the Complaint provides no evidence that the words at issue have become synonymous with the Complainant’s product or service offerings.
Respondent affirms that Complainant is required to show that the main significance of the secondary meaning is related to the producer rather than a product. Respondent further affirms that for a trademark to have acquired secondary meaning, the mark must have become universally recognizable as a brand for particular services and/or goods from only one source.
Finally, Respondent dismisses the Declaration of Mr. Ryan Fitzwater introduced with Complainant’s Supplemental Reply Brief as self-serving and conclusory.
In reviewing and weighing the evidence submitted by Complainant, principally Complainant’s Exhibits 3 and 5, together with Mr. Fitzwater’s Declaration, the Panel is of the view that although at least some of Complainant’s customers may associate THE WAR ROOM mark with Complainant’s goods, the Panel is nevertheless reluctant to generalize from such a small sample to conclusions regarding the consuming public at-large and instead takes a position that because the evidence was sought and collected by Complainant from only a few customers who have dealt with Complainant since on or around 2019, the evidence is not altogether persuasive or conclusive on the issue of how the average customer for the Complainant’s product perceives the words of the subject mark in conjunction with the Complainant’s products.
Further, the Panel took the initiative to peruse the internet domains and US trademark law cited in the record and concludes that the War Room is merely a label used as a marketing tool on the Complainant’s website “warroomtrader.com”. Further, the WAR ROOM mark includes words of a generic and descriptive nature. Generic and descriptive marks require very strong evidence to establish secondary meaning. See Snowboards-for-sale.com, Inc. v. Name Admin. Inc., D2002-1157 (WIPO Feb. 19, 2003) (finding when the alleged mark is highly descriptive the complainant must prove secondary meaning to meet the requirement of Policy ¶ 4(a)(i)); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (finding that when a disputed domain name, such as <187.com>, is made up entirely of generic or common terms, “good evidence will be needed to show a significant secondary meaning and, above all, one associated with Complainant.”). Additionally, a review of the internet space reveals that the War Room exists in a crowded field of similar marks. In this regard, the Panel is persuaded by the discussion between Complainant and the USPTO introduced into evidence by Respondent in its Reply at Exhibit A, where Complainant itself recognizes that “The War Room” exists “...in a crowded field of similar marks and is therefore entitled to a narrower scope of protection. Furthermore, the existence of so many similar marks indicates that consumers have learned to distinguish such marks from one another, which obviates against a likelihood of confusion.” (See Respondent’s Exhibit B, page 13, section E).
Additionally, a search on the internet using the moniker the War Room provides links to several different sites, including Stephen K. Bannon’s War Room; Bannon’s War Room; War Room Mobile on the Apple Store; War Room Infowars, etc. This indicates that the Complainant does not exercise exclusive use of the mark in commerce. See General Motors LLC v Josh Oliver, FA 1976673 (Forum Jan. 12, 2022) (holding that common law rights in a trademark can be established by evidence of secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor). Further, it also demonstrates that the mark has not acquired the distinctiveness necessary to establish secondary meaning. See TimeWorks, LLC v. Shadwan Swed, FA 1519030 (Forum Oct. 15, 2013) (stating “where the claimed mark is comprised of descriptive or dictionary words, Complainant has a greater onus to present compelling evidence of secondary meaning or distinctiveness.”).
Accordingly, the Panel finds that Complainant’s use of THE WAR ROOM has not obtained secondary meaning. Therefore, based on the evidence in the record the Complainant has not met its burden of proof establishing that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel finds that Complainant has not provided the evidence necessary to establish secondary meaning in The War Room and has failed to prove the association of those words with Complainant. Therefore, the Panel finds that Complainant has not established rights in the WAR ROOM mark under Policy ¶ 4(a)(i). See Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning); see also Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)).
Rights or Legitimate Interests and Registration and Use in Bad Faith
The Panel concludes Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark, therefore the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Although the Panel has decided not to analyze Respondent’s rights or interests, or bad faith, regarding the at-issue domain name, the Panel notes that Respondent has engaged a privacy service, and in doing so withholds identifying information. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See Webster Financial Corporation and Webster Bank, National Association v. Brent Webster, FA 1989747 (Forum May 12, 2022) (“The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use.”); Lockheed Martin Corporation v. Steven Lavine, FA 1789580 (Forum July 30, 2018) (“While Respondent used a privacy service to register the domain names, such use does not always support a determination of bad faith.”); Charles E. Runels, Jr. v. Domain Manager / Affordable Webhosting, Inc., Advertising, FA 1749824 (Forum Oct. 23, 2017) (“It is only when a respondent uses a privacy service primarily in order to hinder legal proceedings, that the use of a privacy service maybe an argument supporting an allegation of bad faith.”); CyBerCorp Holdings, Inc. v. Allman, FA 244090 (Forum May 14, 2004) (“Categorically ascribing foul intent to all those using a proxy registrant or proxy service, is simply speculation.”).
However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., Google LLC v. Christopher Hadnagy / Social-Engineer.com, FA 1944032 (Forum June 17, 2021) (“Under Policy ¶ 4(a)(iii), while use of a privacy service may not be demonstrative of bad faith by itself, it may add to another finding of bad faith.”); Guiding Stars Licensing Company, LLC v. Crystal Waddell / 1980, FA 1944462 (Forum May 20, 2021) (“The Panel recalls Respondent’s identity was initially hidden behind a WHOIS privacy service. Therefore, the Panel finds that Respondent’s use of a privacy service contributes to another finding of bad faith under Policy ¶ 4(a)(iii).”); Guess? IP Holder L.P. and Guess?, Inc. v. I S / ICS INC / GEORGE WASHERE / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation, FA 1758582 (Forum Dec. 13, 2017) (“Respondent registered all of the disputed domain names using a WHOIS privacy service. In the commercial context, this raises a rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption.”).
The Panel finds that Respondent’s use of a privacy shield in this case does not constitute bad faith under the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
The Panel finds that Respondent’s use of a privacy shield in this case does not constitute bad faith under the Policy.
Accordingly, it is Ordered that the <thewarroom.ag> domain REMAIN WITH Respondent.
Calvin A. Hamilton, Panelist
Dated: August 28, 2023
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