When you register a domain on the instructions of someone, there better be an arrangement of sorts, such as a contract clause.
In the case of StudioAutobody.com, two parties formed a company and one instructed the other to register the domain. Once the partnership was dissolved, the registrant declined to transfer the domain to the other party.
And that’s why the ensuing UDRP was destined to fail: There was no bad faith in the domain’s registration.
The UDRP process should not be used to address issues of business disputes, particularly when the Complainant cannot present any registered trademarks, common law marks, or even establish proof of use of a mark.
Final decision: Deny transfer of the domain StudioAutobody.com to the Complainant, despite the Respondent’s lack of a formal response.
The domain transfer was denied.
Studio Auto Body Inc v. Kyle Grant / Studio Auto Body, Inc.
Claim Number: FA2207002003226
PARTIES
Complainant is Studio Auto Body Inc (“Complainant”), represented by Jeramiah Becker of Maui Tech Solutions LLC, Hawaii, USA. Respondent is Kyle Grant / Studio Auto Body, Inc. (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is studioautobody.com, registered with Google 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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on July 6, 2022. The Forum received payment on July 7, 2022.
On July 7, 2022, Google LLC confirmed by e-mail to the Forum that the studioautobody.com domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2022 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@studioautobody.com. Also on July 13, 2022, 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 August 08, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
As to rights, Complainant submits that the studioautobody.com domain name is an exact replica of Complainant’s registered business name. The business Studio Auto Body Inc. was started 1/1/2012 and incorporated on 4/1/2012. The Complaint annexes copies of Complainant’s Articles of Incorporation and its General Excise Tax License.
As to legitimacy, the studioautobody.com domain name was originally purchased by the holder of the domain by the direction of Complainant. At the time in which the business relationship was terminated, Respondent refused to transfer the domain name to Complainant. Respondent has no further business agreement of relationship with Complainant.
As to bad faith, as of 11/12/2021 @ 11:00am HST, the domain name studioautobody.com is not in use for publication of a website. No other usage information is available at the moment.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has failed to establish all the elements entitling it to relief.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant does not assert nor demonstrate that it has any registered or common law rights in a trademark or service mark. Its Articles of Incorporation and General Excise Tax License are insufficient to establish that it does. See Deschutes Angler Fly Shop c/o John Hazel v. Jodie Bischof: FA260667 (Forum June 18, 2004). And see Weatherford Int’l, Inc. v. Wells, FA 153626 (Forum May 19, 2003) (holding that prior UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence, statements or proof, e.g., business sales figures, revenues, advertising expenditures, number of consumers served, trademark applications or intent-to-use applications).
Complainant has failed to establish this element.
Rights or Legitimate Interests
In light of the Panel’s finding above, it is unnecessary to consider this element.
Registration and Use in Bad Faith
Having regard to Complainant’s assertion that the studioautobody.com domain name was originally purchased by the holder of the domain by the direction of Complainant, the Panel finds that the domain name was registered in good faith.
Complainant has failed to establish this element.
DECISION
Complainant 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 studioautobody.com domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: August 9, 2022
