DataWidget.com lost via the #UDRP process despite 15 year seniority to the trademark!

The domain DataWidget.com appears to be an aged, generic domain.

Registered in 2005, it was offered for sale by its registrant but a company that registered the mark DATA WIDGET in 2020 is now taking it over via the UDRP process.

Despite a gap of 15 years between the domain’s registration and that of the mark’s, the Complainant in this case, E-Printwerx International LLC, asserted first use of the mark in 2009.

The Complainant also claimed that the Respondent’s use of the domain intends to confuse its customers and disrupt its business by providing knock-off products.

It is not clear how/if that was accomplished, and it appears that the Respondent was not represented by an attorney in this case.

Final decision: Transfer the domain DataWidget.com to the Complainant. Full details follow:

E-Printwerx International LLC v. LARRY ORGAN / EXACTDATA LLC

Claim Number: FA2010001916470

PARTIES

Complainant is E-Printwerx International LLC (“Complainant”), Scottsdale, Arizona, USA. Respondent is LARRY ORGAN / EXACTDATA LLC (“Respondent”), Chicago, Illinois, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The disputed domain name is <datawidget.com>, registered with GoDaddy.com, LLC.

PANEL

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.

Fernando Triana, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 10, 2020; the Forum received payment on October 10, 2020.

On October 12, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <datawidget.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 October 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 2020 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@datawidget.com. Also on October 15, 2020, 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 28, 2020.

On November 1, 2020, the Complainant filed an Additional Submission which complies with Supplemental Rule 7.

On November 3, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

a. Complainant has rights in the DATA WIDGET mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,025,837, registered March 31, 2020). (Annex I to the Complaint), which first use was in 2009.

b. Respondent’s disputed domain name <datawidget.com>, is confusingly similar with Complainant trademark.

c. Respondent’s disputed domain name is very similar to Complainant’s own domain names.

d. Respondent does not have rights or legitimate interests in the disputed domain name <datawidget.com>.

e. Respondent uses the domain to pass off as Complainant in order to perpetrate fraudulent deception and theft of intellectual property.

f. Respondent registered and uses the disputed domain name <datawidget.com> in bad faith.

g. Respondent creates confusion with Complainant in order to steal business.

h. Respondent acquired the disputed domain name well after Complainant had established rights in the DATA WIDGET mark.

i. Finally, Respondent acquired the domain name in order to willfully mislead the public.

 

B. Respondent

a. Respondent legally purchased the disputed domain name <datawidget.com>.

b. Similarity is not an issue since Respondent had no intent to deceive.

c. Respondent no longer makes any use of the disputed domain name and only attempts to sell it.

d. The disputed domain name <datawidget.com> was registered on May 28, 2005.

 

C. Additional Submissions

a. Respondent offered to sell the domain name for USD$15,000.

b. Respondent did not contest the allegations made within the Complaint.

c. Complainant proved a real client who was misled by the Respondent’s appropriation of the domain <datawidget.com>.

d. Respondent sought to scam the Complainant’s customers and prospective customers into going Respondent’s web site, where the Respondent’s knock-off products were prominently displayed.

FINDINGS

1. Complainant owns the trademark DATA WIDGET in the United States of America, in international class 42 with Registration Number Registration No. 6,025,837, of March 31, 2020, with first use in 2009. Hence, the trademark has been used since before the disputed domain name was acquired by Respondent.

2. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.

3. Respondent is not affiliated with Complainant in any way. Respondent acted as a direct competitor of Complainant offering the same services.

4. Respondent registered the disputed 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.

Paragraph 2 of the Policy

A threshold issue is identifying the relevant time period to consider in evaluating Respondent’s rights and legitimate interests, and whether his conduct constituted bad faith.

Paragraph 2 of the Policy addresses this issue – it provides that by applying to register a domain name, or by asking to maintain or renew a domain name registration, a Registrant represents and warrants that (a) the statements Registrant made in the Registration Agreement are complete and accurate; (b) to Registrant’s knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) Registrant is not registering the domain name for an unlawful purpose; and (d) Registrant will not knowingly use the domain name in violation of any applicable laws or regulations. It is Registrant’s responsibility to determine whether the domain name registration infringes or violates someone else’s rights.

The obligations set forth in Paragraph 2 of the Policy apply when registering the domain name as well as when purchasing it, since the Policy is meant to be fulfilled while the domain name remains registered.

The panel in Octogen Pharmacal Co., Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, explains Paragraph 2 of the Policy, as follows:

“As this Panel sees it, this provision not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration, but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations. This effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another’s rights and clearly covers intellectual property rights and the laws protecting them, including copyright and trademark. This representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future. This obligation is an integral part of the Policy, and it cannot be ignored. A party can register or acquire a domain name in good faith, yet use the domain name in the future in such a way that the representations and warranties that the registrant made as of the time of registration are violated. If a party uses the domain name in the future so as to call into question the party’s compliance with the party’s representations and warranties, this may be deemed to be retroactive bad faith registration.”[1]

Consequently, a domain name not only must be registered as per the requirements of Paragraph 2 of the Policy, but also its purchase must comply with the same standards. Thus, the requirements of the Policy can be studied not only regarding a domain name registration but also when it is purchased by a third party.

In fact, it is very important to stress that Paragraph 2 of the Policy states that Registrant represents and warrants, when applying to register a domain name, or when requesting to maintain or renew a domain name registration, that the domain name will not infringe upon or otherwise violate the rights of any third party.

The panel in Eastman Sporto Group LLC v. Jim and Kenny, sets the scope of Paragraph 2 of the Policy, as follows:

“Paragraph 2 does not distinguish among the initial date of registration and subsequent requests for renewal – the undertaking by its terms applies as of all such dates.” [2]

Furthermore, good faith registration does not mean good faith purchase. The panel in PAA Laboratories GmbH v. Printing Arts America:

“The abusive refreshing of the original registration is an act which this Panel considers should be an act of a kind encompassed by paragraph 4(a)(iii) of the Policy. The benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in “possession” long after the original registration would have expired.”[3]

In this case, the disputed domain name was registered by a third party in 2005. However, it was purchased by Respondent in 2016, as it was duly proven in Annex II to the Complaint.

Therefore, the elements of the Policy must be studied at the time that Respondent acquired the disputed domain name according to the specific circumstances of the case.

Identical and/or Confusingly Similar

Complainant contends to be the owner of the trademark DATA WIDGET in the United States of America, in international class 42 with Registration Number Registration No. 6,025,837, of March 31, 2020, with first use in 2009.

i) Existence of a trademark or service mark in which Complainant has rights

Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of trademark rights. As a matter of general principle, industrial property rights are typically acquired by registration before a competent office.

The generally accepted definition of a trademark involves the concept of a distinctive force as the most relevant element. It is this “distinctiveness” that gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force and the owner is granted with an exclusive right over the trademark, which entitles him or her to prevent any third party from using the registered sign or any other sign confusingly similar to it.

However, the UDRP does not discriminate between registered and unregistered trademarks[i] and thus, it is well established that a complainant is not required to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.

In this case, Complainant has proven its rights in the trademark DATA WIDGET (Annex I to the Complaint).

This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with services of international class 42. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.

Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark DATA WIDGET for purposes of Paragraph 4(a)(i) of the Policy.

ii) Identity or confusing similarity between the disputed domain name and Complainant’s trademark

Complainant alleges that the disputed domain name is confusingly similar with Complainant’s trademark DATA WIDGET.

In the first place, before establishing whether or not the disputed domain name <datawidget.com> is confusingly similar to Complainant’s trademark DATA WIDGET, the Panel wants to point out that the addition of generic top-level domains (gTLDs), e.g., “.com,” “.biz,” “.edu,” or “.org”, may be disregarded when determining if the disputed domain name is identical or confusingly similar to the registered trademark[ii].

UDRP Panels have unanimously accepted that the inclusion of the “.com” gTLD in a disputed domain name may be disregarded in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico, D2000-0477 (WIPO July 25, 2000), the panel stated:

“The addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services”.

The Panel considers that the reproduction of the trademark DATA WIDGET, by the disputed domain name <datawidget.com>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[iii], mainly since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is Complainant. Thus, by registering the disputed domain name, Respondent creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the domain names.

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark DATA WIDGET and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.

Rights or Legitimate Interests

a) Prima Facie Case.

Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[iv].

In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:

“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.

Therefore, a Complainant is required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[v]. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <datawidget.com> because of the following: i) Complainant has not authorized Respondent to use Complainant’s trademarks for any purpose, neither has license them in any way to Respondent; ii) continued use of the domain <datawidget.com> perpetuates the fraudulent deception, theft of intellectual property and improper infringement of a properly issued United States Trademark issued by the United States Patent & Trademark Office and long-used in commerce by the Complainant; iii) Respondent has not used and is not using the disputed domain name in connection with a bona fide offering of goods or services, since, the products offered on the website to which the disputed domain name redirects, are identical to the products offered by Complainant; and iv) Respondent has not made and is not making a legitimate noncommercial or fair use of the domain name, the website to which the disputed domain name redirects has knock-off content (stolen by Respondent).

The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.

b) Respondent’s rights or legitimate interests in the disputed Domain Name.

Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:

(i) Before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent states to have removed the content of the website to which the disputed domain name redirects.

Nonetheless, Complainant shows how Respondent has used the website to which the disputed domain name redirects to offer the same services provided by Complainant.

Given the above, the Panel considers the following:

1. Respondent did not provide any evidence concerning use of the disputed domain name in connection with a bona fide offering of goods or services.

2. The use of the disputed domain name proved by Complainant, cannot be qualified as bona fide offering of goods or services as the services offered were the same as Complainant’s services, clearly intended to mislead consumers.

3. It is not possible to legitimate any deceiving conduct as a bona fide offering of goods or services.

4. Respondent did not provide any evidence supporting the absence of a trademark violation, as reproduction of the trademark within the disputed domain name and the services create the risk of confusion.

5. Respondent use of Complainant’s trademark as part of the disputed domain name also misleads visitors into thinking that Complainant is somehow connected to Respondent. Which was proven by Complainant with the email from the confused consumer.

6. Moreover, there is no evidence to support that Respondent is and/or has been commonly known by the disputed domain name.

7. Finally, Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, since the use of the same services is misleading and Respondent’s use of Complainant’s trademark as part of the disputed domain name also misleads visitors into thinking that Complainant is somehow connected to Respondent.

This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain names.

Furthermore, Respondent never explained the reason for choosing the expression DATA WIDGET to be part of its domain name.

In fact, Complainant proved that Respondent knew of Complainant’s trademarks DATA WIDGET and Respondent did not denied to have known the trademark before obtaining the disputed domain name. Yet Respondent incorporated said trademarks in the disputed domain name. Thus, Respondent used the trademarks DATA WIDGET to create a likelihood of confusion aimed to divert consumers to Respondent’s offered products and services.

Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with as Respondent lacks any right or legitimate interest in the disputed domain name.

Registration and Use in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.

Complainant asserts that Respondent registered the disputed domain name in bad faith, since Respondent knew of the trademark DATA WIDGET[vi].

The Panel agrees with Complainant. The fact that Respondent chose the word “DATA WIDGET” to make up the disputed domain name is, in this Panel’s view, evidence per se of bad faith. The Panel finds this selection was deliberate and not product of chance, especially since it was used to identify the same services.

Respondent simply could not have been unaware of Complainant’s rights. Thus, the Panel finds Respondent deliberately took someone else’s trademark to register a domain name and to create a business around it.

Thus, this Panel considers that the mere fact of knowingly incorporating a third-party’s trademark in a domain name constitutes registration in bad faith[vii]. See Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Direct Navigation Data Inc., WIPO Case No. D2012-1448, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.

In addition, the Panel considers that Respondent must have known that the word “DATA WIDGET” within the disputed domain name would attract Internet users seeking Complainant’s trademark, to the website from which expected to earn money. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark.

Furthermore, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website due to the inclusion of Complainant’s trademark in the disputed domain name and the same services on the website. Hence, consumers would not able to differentiate the source of origin, creating a likelihood of confusion with Complainant’s mark and making consumers believe there was a relationship of sponsorship, affiliation, or endorsement between Complainant and Respondent, is indicative of bad faith registration and use pursuant to Policy ¶ 4(b).

Moreover, offering to sell the disputed domain name for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name, such as, USD$15,000, is indicative of bad faith registration and use pursuant to Policy ¶ 4(b).

Finally, the incorporation of Complainant’s trademark in the disputed domain name and the use of Complainant’s trademarks within the website can also disrupt Complainant’s business, which is indicative of bad faith registration and use pursuant to Policy ¶ 4(b).

Therefore, the three elements of the Policy ¶ 4 are satisfied in the present case in respect to Respondent of the disputed domain name.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <datawidget.com> domain name be TRANSFERRED from Respondent to Complainant.

Fernando Triana, Esq., Panelist

Dated: November 16, 2020

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