Astrogold .com UDRP : Give this panelist a fat cigar!

Directnic

Not very often do we give out the “big fat cigar” award to a UDRP panelist.

In the case of Astrogold.com, the Complainant was Ajnaware Pty Ltd of Australia, that relied on a 2014 registration mark for ASTRO GOLD in order to go after the domain.

Registered in 2009, the domain is being used with astrological services in mind, unlike the ASTRO GOLD mark that is about app development. For that purpose, Astrogold.com is being forwarded to Astrolis.com where those services are being rendered from.

But back to the “big fat cigar” award.

There was no response by the Respondent, however, the sole panelist, John J. Upchurch, noted the following:

“The Panel notes that Respondent registered the <astrogold.com> domain name on November 3, 2009, and Complainant registered the ASTRO GOLD trademark on August 5, 2014. The domain name registration thus predates Complainant’s trademark registration by nearly five years, which can indicate a lack of bad faith registration on behalf of Respondent. “

The domain Astrogold.com was thus ordered to remain with the Respondent, and Mr. John J. Upchurch earned a big fat cigar award.

Full details follow.

Ajnaware Pty Ltd v. Domain Administrator

Claim Number: FA1708001744102

PARTIES

Complainant is Ajnaware Pty Ltd (“Complainant”), represented by Graham Dawson of Ajnaware Pty Ltd, Australia. Respondent is Domain Administrator (“Respondent”), Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <astrogold.com>, registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 10, 2017; the Forum received payment on August 10, 2017.

On August 15, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <astrogold.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 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2017 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@astrogold.com. Also on August 17, 2017, 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.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On September 11, 2017, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant:

1. Complainant owns, develops, markets and sells an astrology app named ASTRO GOLD which is currently available on three platforms, namely iOS, Android and macOS. Complainant registered the ASTRO GOLD mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,579,175, registered Aug. 5, 2014). See Compl., at Attached Sched. A. Respondent’s <astrogold.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s entire mark, and simply eliminates the space and adds the country code top-level domain (“ccTLD”) “.com.”

2. Respondent has no rights or legitimate interests in the <astrogold.com> domain name. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect users to <astrolis.com>, which directly competes with Complainant by providing astrology and psychic services, and notably advertises an astrology app for sale called “Horoscope & Tarot” for the iOS and Android platforms.

3. Respondent registered and uses the <astrogold.com> domain name in bad faith. When interested users who have heard of the ASTRO GOLD mark inadvertently type in the disputed domain name instead of Complainant’s <astrogold.io> domain name, they are redirected to the competitors’ website, which sells competing products in a similar area.

B. Respondent:

1. Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <astrogold.com> domain name on November 3, 2009.

FINDINGS

1. Respondent’s <astrogold.com> domain name is confusingly similar to Complainant’s ASTRO GOLD mark.

2. Complainant has failed to prove that Respondent does not have any rights or legitimate interests in the <astrogold.com> domain name.

3. Complainant has failed to establish that Respondent registered or used the <astrogold.com> domain name in bad faith.

DISCUSSION

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 view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

Identical and/or Confusingly Similar

Complainant claims it registered the ASTRO GOLD mark with the USPTO (e.g. Reg. No. 4,579,175, registered Aug. 5, 2014). See Compl., at Attached Sched. A. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the ASTRO GOLD mark.

Complainant next argues that Respondent’s <astrogold.com> domain name is identical to Complainant’s mark as it contains Complainant’s entire mark, and simply eliminates the space and adds the ccTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”); see also Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). The Panel therefore finds that the <astrogold.com> domain name is identical to the ASTRO GOLD mark under Policy ¶4(a)(i).

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)

(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

Complainant argues that Respondent uses the disputed domain name to offer advertisements and services in direct competition with Complainant. Using a confusingly similar domain name to offer competing services fails to provide a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant alleges that Respondent uses the disputed domain name to redirect users to <astrolis.com>, which competes with Complainant by providing astrology and psychic services, and notably advertises an astrology app for sale called “Horoscope & Tarot” for the iOS and Android platforms. However, Complainant does not provide any further documentation to evince this assertion, and its conclusory allegations are insufficient to establish this element.

Registration and Use in Bad Faith

The Panel notes that Respondent registered the <astrogold.com> domain name on November 3, 2009, and Complainant registered the ASTRO GOLD trademark on August 5, 2014. The domain name registration thus predates Complainant’s trademark registration by nearly five years, which can indicate a lack of bad faith registration on behalf of Respondent. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark). Accordingly, the Panel concludes Complainant has failed to establish that Respondent registered the disputed domain name in bad faith.

DECISION

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 <astrogold.com> domain name REMAIN WITH Respondent.

John J. Upchurch, Panelist

Dated: September 25, 2017


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Comments

One Response to “Astrogold .com UDRP : Give this panelist a fat cigar!”
  1. DomainNameBroker.com says:

    Do not remind me of tobacco.

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