The domain name Retailinsite.com was registered in 1998; the mark RETAIL INSITE was registered by R.I. Properties, Inc. dba. Retail Insite in 2022, citing a date of first use in 1999.
The sole panelist stated that the mark’s registration date is the definitive date in making a decision:
Of course, “the claimed date of first use in the application [is not] definitive evidence that the mark actually was used and valid prior to the filing of the application”. Handy Guy Inc. v. Merlin Kauffman, FA 1998214 (Forum July 20, 2022). Further, the WHOIS verification provided by Respondent’s Registrar reflects a creation date of November 25,1998 and there is no evidence provided that indicates Respondent acquired the domain name at a later date. As the registration date of the retailinsite.com domain name predates even the earliest possible date on which the submitted evidence suggests that Complainant may have acquired rights in the RETAIL INSITE trademark, the Panel is unable to find that Respondent targeted the mark in bad faith at the time it registered the domain name and this fails the conjunctive requirement of Policy.
So despite the domain being used as a forward to a Competitor of the Complainant’s, the panelist ordered the domain Retailinsite.com to remain with the Respondent.
Note: It is not clear if the Respondent has a relationship with the competitor of the Complainant’s that they forward the domain to.
The domain transfer was denied.
R.I. Properties, Inc. dba. Retail Insite v. Joe Kang / at360, Inc.
Claim Number: FA2302002033531
PARTIES
Complainant is R.I. Properties, Inc. dba. Retail Insite (“Complainant”), represented by Jason Wallace, California, USA. Respondent is Joe Kang / at360, Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is retailinsite.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.
Steven M. Levy, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 27, 2023; Forum received payment on February 27, 2023.
On February 28, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the retailinsite.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 March 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 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@retailinsite.com. Also on March 1, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On March 26, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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, 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
Complainant has rights in the trademark RETAIL INSITE for leasing and sales of land, real estate, shopping malls, commercial buildings, and in the activity of real estate brokerage through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 6,892,991, registered Nov. 8, 2022). Respondent’s retailinsite.com domain name is identical to Complainant’s word mark.
Respondent lacks rights or legitimate interests in the disputed domain name. There is no website hosted at retailinsite.com and the domain name performs a redirect to another site which is owned by a direct competitor to the Complainant.
The disputed domain redirects users to a competitor’s site and is cybersquatting on Complainant’s trademark, for commercial gain, based on a likelihood of confusion and unfair competition. It also violates Section 43(a) of the federal Lanham Act. Emails sent to the domain do not bounce back as undeliverable.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
– Complainant has proven its ownership of trademark rights in the phrase RETAIL INSITE and the retailinsite.com domain name is identical to such mark;
– There is insufficient evidence upon which to conclude that Respondent has any rights or legitimate interest in the disputed domain name; and
– Complainant is unable to support its claim under Policy ¶ 4(a)(iii) as the disputed domain name predates the asserted trademark and thus there is no evidence that Respondent targeted the mark or 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.
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 asserts rights in the RETAIL INSITE mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As Complainant has submitted a copy of its USPTO registration certificate, the Panel finds that it has demonstrated rights in the RETAIL INSITE mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s retailinsite.com domain name is identical to the RETAIL INSITE mark. The Panel notes that the only difference is the deletion of the space between the two words of the mark and the addition of the “.com” gTLD to create the disputed domain name. The addition of a gTLD typically fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), ‘.com’, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Policy ¶ 4(c) provides three examples of how a Respondent may demonstrate the existence of rights and legitimate interests in a disputed domain name, i.e.:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
The entirety of Complainant’s statement on the topic of rights and legitimate interests, under Policy ¶ 4(a)(ii), is as follows:
The Respondent has no rights or interests in retailinsite.com or the mark ‘Retail Insite’. There are no other USPTO Trademark registrations for ‘Retail Insite’ under any other uses aside from what is described in U.S. Reg. No. 6,892,991 held by the Complainant. There is no website hosted at retailinsite.com, and further, at360 provides no product or service being offered in relation to retailinsite.com or any derivation of ‘retail insite’ that the Respondent may claim as a legitimate use of the domain name. The Complainant believes this registration constitutes actionable cybersquatting under the Anticybersquatting Consumer Protection Act.
In another portion of the Complaint, it is noted that “[t]he domain performs a redirect to colliers.com which is owned by a direct corporate competitor to the Complainant.”
Although the Complaint does not address any of the examples provided in Policy ¶ 4(c), the Panel will consider them, as well as any other issues raised by Complainant’s submissions as they may relate to the subject of rights and legitimate interests.
Complainant asserts that “[t]here are no other USPTO Trademark registrations for ‘Retail Insite’…” presumably to infer that Respondent has no claim to such a trademark and is thus not commonly known by the disputed domain name. Unfortunately, none of Complainant’s submitted evidence supports its assertion and so the Panel is not able to determine the validity of this statement. However, relevant WHOIS information is often used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the chevron-europe.com domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information for the disputed domain name provided in the Registrar Verification email lists the registrant as “Joe Kang / at360, Inc.” and this has no bearing on the name “Retail Insite”. For its part, Respondent has not filed a Response or made any other submission in this case to explain its claim to the retailinsite.com domain name. Thus, the Panel concludes that it has no evidence upon which to find that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant notes that the disputed domain name does not, itself, host any website but redirects users to the website of a competitor within the real estate field of business. Using a disputed domain name to divert internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Here, Complainant provides a screenshot of the real estate competitor’s website. The Panel finds that such activity and evidence leads to the conclusion that Respondent is not making a bona fide offering of goods or services using the disputed domain name and that it is also not making a legitimate noncommercial or fair use thereof per Policy ¶¶ 4(c)(i) or (iii).
Finally, Complainant claims that the disputed domain name and its activities are in violation of the Anticybersquatting Consumer Protection Act (the “ACPA” found at 15 U.S.C. § 1125(d)) which is part of the federal Lanham Act in the United States of America. While UDRP Panels have, on occasion, looked to the ACPA for guidance, see Twentieth Century Fox Film Corporation v. DISH Network LLC, FA 1350483 (Forum Nov. 22, 2010), claims that are primarily based on this United States statute are beyond the scope of the Policy due to its differing standards, the wide array of discovery and other investigative tools available in the courtroom setting, and the limited jurisdiction afforded the Policy by ICANN. James Linlor v. Host Master / McAfee LLC, FA 1985124 (Forum Mar. 31, 2022) (“The Complaint further lays out arguments arising under the federal Anticyber-squatting Consumer Protection Act (ACPA) (15 U.S.C. § 1125(d)). These arguments are inapposite to a proceeding conducted under the Policy, which permits the Panel to consider and decide only claims of abusive cybersquatting as specifically contemplated by its terms.”)
Registration and Use in Bad Faith
Policy ¶ 4(b) provides its own examples of circumstances that may give rise to a finding that a respondent has registered and uses a disputed domain name in bad faith. Complainant does not specifically address these but it does assert that “[t]he registration of the domain is dilutive of the trademark ‘Retail Insite’ and represents actionable cybersquatting, trademark and trade name infringement, and unfair competition.” It further notes that the domain name redirects users to the website of a real estate competitor and claims that “[s]uch use violates Section 43(a) of the federal Lanham Act.” While redirecting a disputed domain name to a competitor evidences bad faith use under Policy ¶¶ 4(b)(iii) and (iv), and while Complainant has submitted a screenshot of the competing website to which it claims the disputed domain name redirects, the Panel declines to analyze this evidence for the following reason.
No evidence is provided to indicate that the Complainant possessed trademark rights at a time prior to Respondent’s acquisition of the disputed domain name. Paragraph 4(a)(iii) of the Policy is stated in the conjunctive “bad faith registration and use” [emphasis added]. The lack of any evidence that the Complainant’s trademark existed when the disputed domain name was registered suggests that Respondent could not have known of or anticipated the trademark and thus could not have targeted it in bad faith at that point in time. See VitriVax, Inc. v. Alexander Segal, FA 1959542 (Forum Sep. 10, 2021) (“The Panel notes that Respondent’s registration of the disputed domain name predates Complainant’s first claimed rights in the VITRIVAX mark (filed on November 5, 2020 and proceeded to registration on August 10, 2021). Complainant generally cannot prove registration in bad faith per Policy paragraph 4(a)(iii), as the Policy requires a showing of bad faith registration and use.”) The submitted USPTO trademark registration certificate for the RETAIL INSITE mark submitted by Complainant reflects a registration date of November 8, 2022, an application date of September 20, 2021, and a first use in commerce date of July 26, 1999. Of course, “the claimed date of first use in the application [is not] definitive evidence that the mark actually was used and valid prior to the filing of the application”. Handy Guy Inc. v. Merlin Kauffman, FA 1998214 (Forum July 20, 2022). Further, the WHOIS verification provided by Respondent’s Registrar reflects a creation date of November 25,1998 and there is no evidence provided that indicates Respondent acquired the domain name at a later date. As the registration date of the retailinsite.com domain name predates even the earliest possible date on which the submitted evidence suggests that Complainant may have acquired rights in the RETAIL INSITE trademark, the Panel is unable to find that Respondent targeted the mark in bad faith at the time it registered the domain name and this fails the conjunctive requirement of Policy ¶ 4(a)(iii).
In view of the above-stated deficiencies in the Complaint and Complainant’s submissions, the Panel cannot, by a preponderance of the evidence, find that the Respondent registered the disputed domain name in bad faith under Paragraph 4(a)(iii) of the Policy.
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 retailinsite.com domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: March 29, 2023
