When you are a new company your choice of a brand might stumble across a domain that’s been registered already. In the case of Fresh Clothes LLC, the company formed in 2020, registering the mark FRESH CLOTHES. Meanwhile, the matching .com domain, FreshClothes.com, was registered in 2003.
Fast-forward 20 years from the domain’s registration date, Fresh Clothes LLC decided to file a UDRP. Fortunately for the domain’s owner, the decision by the panel was clear:
Here, Respondent registered the Domain Name, which consists of two descriptive words, on October 15, 2003. Complainant was established and commenced use of the FRESH CLOTHES mark in 2020, approximately 17 years after the Domain Name was registered. Respondent could not have entertained bad faith intentions regarding the FRESH CLOTHES mark because it could not have contemplated Complainant’s then non-existent rights in FRESH CLOTHES mark at the moment the domain name was registered. The fact that there is little or no activity on the website of the Domain Name, or that Respondent has made an offer to sell the Domain Name does not change the fact that Complainant has failed to establish that the Domain Name was registered in bad faith, a requirement of the Policy.
The Respondent’s lack of a response did not affect the positive outcome. Final decision: Deny the transfer of FreshClothes.com to the Complainant, who’d have to pony up some fresh capital for this aged domain, or change their brand.
The domain transfer was denied.
Fresh Clothes, LLC v. Yui Quan
Claim Number: FA2307002052912
PARTIES
Complainant is Fresh Clothes, LLC (“Complainant”), represented by Matthew J. Krebs of Evans Keane LLP, Idaho, USA. Respondent is Yui Quan (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is freshclothes.com (“Domain Name”), registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on July 12, 2023; Forum received payment on July 12, 2023.
On July 13, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the freshclothes.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 July 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@freshclothes.com. 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On August 9, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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 is an Idaho limited liability company, established in 2020, that provides laundry services. Complainant asserts rights in the FRESH CLOTHES mark based upon an application with the United States Patent and Trademark Office (“USPTO”) and a registration of the FRESH CLOTHES mark as a service mark with the Idaho Secretary of State on August 31, 2020. Respondent’s freshclothes.com domain name is identical to Complainant’s FRESH CLOTHES mark because it consists of the mark in its entirety.
Respondent does not have rights or legitimate interests in the freshclothes.com domain name. Respondent is not licensed or authorized to use Complainant’s FRESH CLOTHES mark and is not commonly known by the Domain Name.
Respondent registered and uses the freshclothes.com domain name in bad faith. Upon contacting Respondent seeking transfer of the Domain Name, Respondent sought a “five figure” (USD) offer which is well in excess of the cost of purchasing a domain name from a registrar.
B. Respondent
Respondent failed to submit a Response in this proceeding. The freshclothes.com domain name was registered on October 15, 2003.
FINDINGS
Complainant having failed to establish bad faith registration of the domain name freshclothes.com has not established all required elements of its claim, and thus its complaint must be denied.
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
In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of whether Complainant has rights in a mark under Policy ¶ 4(a)(i) other than to note the well-established principle that neither a trade mark application, nor a registration with a United States state based authority, by themselves sufficiently confer a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See PK Information Systems, dba St Pete Software v. Kevin Kurpe, FA 1835258 (Forum May 13, 2019) (“Complainant claims trademark rights based on a Florida state trademark registration for ST PETE SOFTWARE. As numerous Panels have held, a state trademark registration is not itself sufficient proof of “rights in a trademark” for purposes of the UDRP because state trademark applications typically are not examined on absolute grounds. In particular, in granting a state trademark registration, the Florida Department of State typically does not consider whether the applied-for term is generic or merely descriptive; rather, the Department of State will typically issue the registration as long as there are no identical registrations on the State registry. See generally Town of Easton Connecticut v. Lightning PC Inc., FA 1220202 (Forum Oct. 12, 2008) (explaining that no deference is due to state registrations because they are “usually granted automatically or only after a cursory review for exact matches on the State’s trademark registry.”). See also Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”); see also Imagine Nation Books Ltd. v. LEE, LAWRENCE, FA 1662128 (Forum Mar. 31, 2016) (“Complainant’s only assertion of rights in the mark stem from a trademark application and the statement that Complainant offers ‘services and goods under the name Collective Goods’… [and] pending trademark applications do not establish rights in a mark under Policy ¶ 4(a)(i).”).
Rights or Legitimate Interests
In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.
Registration and Use in Bad Faith
The Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Respondent’s registration of the freshclothes.com domain name predates Complainant’s first claimed rights in the FRESH CLOTHES mark, and thus Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce.”) Here, Respondent registered the Domain Name, which consists of two descriptive words, on October 15, 2003. Complainant was established and commenced use of the FRESH CLOTHES mark in 2020, approximately 17 years after the Domain Name was registered. Respondent could not have entertained bad faith intentions regarding the FRESH CLOTHES mark because it could not have contemplated Complainant’s then non-existent rights in FRESH CLOTHES mark at the moment the domain name was registered. The fact that there is little or no activity on the website of the Domain Name, or that Respondent has made an offer to sell the Domain Name does not change the fact that Complainant has failed to establish that the Domain Name was registered in bad faith, a requirement of the Policy.
Therefore, the Panel finds Respondent did not register the 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 freshclothes.com domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: July 9, 2023
