Ranger American of Puerto Rico, Inc. filed a UDRP against the domain RangerAmerican.org to protect their established brand. The Complainant uses the .com domain since 1999.
Some issues with the mark’s registration however, led to an outcome favoring the Respondent. They offer services in the state of Texas as an alarm company and in 2014 they registered the mark RANGER AMERICAN, following a lapse in registration of the Complainant’s mark.
Eventually, the Complainant registered the mark RANGER AMERICAN in 2023.
Final decision: Deny the transfer of the domain RangerAmerican.org to the Complainant. The Respondent’s request for a finding of Reverse Domain Name Hijacking was denied.
The domain transfer was denied.
Ranger American of Puerto Rico, Inc. and JB Livsey Holdings LLC
v. Stephen Wagner
Claim Number: FA2308002059588
PARTIES
Complainant is Ranger American of Puerto Rico, Inc. and JB Livsey Holdings LLC (“Complainant”), represented by Frederick L. Tolhurst of Dentons, Cohen & Grigsby, P.C., Pennsylvania, USA. Respondent is Stephen Wagner (“Respondent”), represented by Warren Norred of NORRED LAW, PLLC, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is rangeramerican.org, 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.
Eugene I. Low as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on August 29, 2023; Forum received payment on August 29, 2023.
On August 30, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the rangeramerican.org 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 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 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@rangeramerican.org. Also on August 31, 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.
A timely Response was received and determined to be complete on September 25, 2023.
On September 27, 2023, pursuant to the Parties’ request to have the dispute decided by a single-member Panel, Forum appointed Eugene I. Low as Panelist.
Complainant filed an unsolicited “Reply to Answer of Respondent” on September 28, 2023.
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.
By its Procedural Order dated October 5, 2023, the Panel made the following orders (among other procedural matters):
1. Respondent be allowed to file its reply (if any) to Complainant’s unsolicited “Reply to Answer of Respondent”.
2. The parties be directed to file copies of their respective submissions and evidence filed in the former domain name proceedings FA2103001937444 in respect of the same disputed domain name rangeramerican.org between JB Livsey Holdings LLC as complainant and Stephen Wagner as respondent (“Previous Proceedings”).
Pursuant to the Procedural Order, Respondent filed a reply titled “Respondent’s Sur-Reply to Complainants’ Reply” on October 12, 2023, and the parties filed copies of the submissions and evidence for the Previous Proceedings on October 12, 2023.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant JB Livsey Holdings LLC.
PRELIMINARY ISSUE #1: MULTIPLE COMPLAINANTS
In these proceedings, Complainant comprises two entities. Paragraph 3(a) of the Rules provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Panel notes that Complainant “Ranger American of Puerto Rico, Inc.” and Complainant “JB Livsey Holdings LLC” are respectively the registrant and the exclusive licensee of the RANGER AMERICAN marks of which the Complaint is based on. The Panel considers there is sufficient nexus between these two entities, and will refer to these two entities collectively as “Complainant” in these proceedings.
PRELIMINARY ISSUE#2: UNSOLICITED SUBMISSIONS
Complainant filed an unsolicited “Reply to Answer of Respondent” on September 28, 2023.
Forum ‘s Supplemental Rule 7 provides that it is within the discretion of the Panel to accept or consider unsolicited additional submissions.
In the abovementioned Procedural Order, the Panel indicated that it was minded to admit Complainant’s “Reply to Answer of Respondent” and allowed Respondent an opportunity to file its reply thereto (if any). Subsequently, Respondent filed its “Respondent’s Sur-Reply to Complainants’ Reply” pursuant to the Procedural Order.
The Panel considers that no prejudice will be caused by admitting both parties’ additional submissions. Accordingly, the Panel admits Complainant’s “Reply to Answer of Respondent” and Respondent’s “Respondent’s Sur-Reply to Complainants’ Reply”.
PRELIMINARY ISSUE #3: RES JUDICATA
As mentioned above, Complainant “JB Livsey Holdings LLC” previously filed a UDRP complaint against Respondent in respect of the same disputed domain name (Claim Number: FA2103001937444) (“Previous Proceedings”). That complaint was denied and the reasoning was set out in the panelist’s decision dated May 3, 2021. In the present proceedings, both Complainant and Respondent alerted the Panel of the Previous Proceedings. The decision of the Previous Proceedings was included in the parties’ original evidence for the present proceedings.
Pursuant to the Procedural Order, the Panel was provided with copies of
the submissions and evidence filed in the Previous Proceedings by the parties thereto.
Respondent contended that the present Complaint was essentially the same as the Previous Proceedings and should qualify as an abuse of process; whereas Complainant contended that the issues raised in the Complaint were not decided and could not have been decided in the Previous Proceedings – for instance Complainant “Ranger American of Puerto Rico, Inc.” was not a party to the Previous Proceedings and Complainant “JB Livsey Holdings LLC” was not an exclusive trademark licensee back then. In the current proceedings, Complainant also raised new arguments by relying on the registrations of the domain names “rangeramerican.com” and “rangeramerican.net” by Complainant or its predecessors, which pre-dated the registration of the disputed domain name.
Generally speaking, re-filed UDRP complaints would be barred by the principle of res judicata. It is only under highly limited circumstances that panelists may accept re-filed UDRP complaints, e.g. where there was serious misconduct in the original proceedings; or where new material evidence that was reasonably unavailable in the original proceedings is now presented. See Paragraph 4.18 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, for a more detailed discussion on the applicable criteria. The mere addition of a party does not preclude the application of res judicata.
Having considered the parties’ arguments and evidence, the Panel would not bar the present Complaint on the ground of res judicata, as the Panel observes that the present Complaint is apparently based on some fundamentally differently rights (e.g. trade mark registration rights and common law rights, as opposed to only common law rights in the Previous Complaint) and evidence (e.g. trade mark registrations and domain name registrations of the new Complainant “Ranger American of Puerto Rico, Inc.”). That said, the Panel also observes that a fair bit of the arguments and matters raised in the current Complaint appear to overlap with those in the Previous Proceedings. Striking a balance, the Panel considers that it would serve overall justice for the Panel to decide on the current Complaint on merits rather than dismissing it on the ground of res judicata.
PARTIES’ CONTENTIONS
The Panel has considered both parties’ submissions and evidence (including additional submissions and evidence) and summarized their respective cases as follows.
A. Complainant
The Complaint is based on the following trademarks (collectively as “the RANGER AMERICAN MARKS”) owned by Complainant, Ranger American of Puerto Rico, LLC:
1) the word mark: “RANGER AMERICAN” under US Trademark Registration number 6,945,430 (registration date: January 10, 2023); and
2) the composite mark RANGER AMERICAN & DESIGN as shown below:
under US Trademark Registration number 6,932,971 (registration date: December 27, 2022).
These US trademark registrations provide that Ranger American of Puerto Rico, LLC has used the RANGER AMERICAN MARKS in commerce since 1982 in connection with security systems. Ranger American of Puerto Rico, LLC has continually used the domain name “rangeramerican.com” from at least January 25, 1999.
JB Livsey Holdings LLC is the exclusive licensee of Ranger American of Puerto Rico, LLC for trademark rights in the RANGER AMERICAN MARKS. JB Livsey Holdings LLC (directly and through its predecessors in interest) has continually used the domain name “rangeramerican.net” from at least March 29, 2002 in connection with security systems and security services.
Complainant has been using the domain names “rangeramerican.com” and “rangeramerican.net”. Those domain names resolve to respective web sites that use the RANGER AMERICAN MARKS in connection with security goods and services. Respondent, a third Internet retailer, without authority from the trademark owner, Ranger American of Puerto Rico, LLC, uses the disputed domain name that resolves to a website that also displays the RANGER AMERICAN MARKS in connection with security goods and services that compete with goods and services of Complainant. For purposes of UDRP, the disputed domain name is identical to the Complainants’ domain names. Respondent’s use of the disputed domain name that is identical to Complainants’ domain names together with the unauthorized use of the Complainants’ RANGER AMERICAN MARKS is intended to confuse Internet users and trade on the Complainants’ name and reputation. Respondent’s obvious misuse of the disputed domain name violates UDRP §4(a) and should not be allowed. Registrant’s use of the disputed domain name results in confusion, mistake, or deception as to source as well as the bad faith diversion of sales away from Complainant and to Respondent.
In its “Reply to Answer of Respondent”, Complainant argued that the issues raised in the current Complaint were not decided and could not have been decided in the Previous Proceedings. Complainant also argued, among other points, that Respondent has no legitimate interest in respect of the disputed domain name because before Respondent registered the disputed domain name, he was not commonly known by the disputed domain name.
B. Respondent
Respondent admitted that the disputed domain name is confusingly similar to Complainant’s registered marks, although Respondent notes that Complainant Ranger American of Puerto Rico, LLC only sought those registrations in 2019 and 2020, whereas Respondent sought registration of “RANGER AMERICAN” under US Trademark Registration Nos. 4,637,031 and 4,637,029 in 2014 for his continued sales efforts as a service provider, only after Complainant JB Livsey Holdings LLC had abandoned the RANGER AMERICAN name.
Respondent has never attempted to prevent Complainant from using the RANGER AMERICAN name, or its registered marks, in similar service industries.
In April 2014, Respondent formed Ranger American, Inc. and obtained a license with the State of Texas as an alarm company. Respondent has offered service repair on Ranger American equipment and monitoring since before 2009, to the present, and has legitimate rights and interests to the Ranger American marks in the state of Texas.
Respondent has used the disputed domain name for its website for more than a decade, which features Respondent’s alarm system monitoring, support, and repair service, publicly known as Ranger American. When Respondent acquired the disputed domain name in 2009, he had been operating security alarm systems bearing the Ranger American marks since at least 2003. There exists no evidence of bad faith. Respondent did not register the disputed domain name to prevent Complainant from use of the registered marks, and Respondent has never attempted to sell the domain to any party but has used it only for his own sales effects concerning legitimate service of Ranger American products.
Respondent has included on his website a disclaimer stating that it is “Not affiliated with Ranger American of Puerto Rico, Inc.” to discourage from potential confusion.
Respondent has merely exercised his common law rights as depicted in the decision of the Previous Proceedings to compete with Complainant.
Respondent contended that the present Complaint was essentially the same as the Previous Proceedings and should qualify as an abuse of process.
In Respondent’s Sur-Reply to Complainants’ Reply, Respondent reiterated that Respondent never denied Complainant’s rights to the marks, but merely argued his common law rights to the RANGER AMERICAN name as well. Respondent asserted that he has been commonly known by the disputed domain name since at least as early as in 2003. Respondent considered that Complainant has repeatedly attempted to strip Respondent of his rightfully awarded domain name, while Respondent was content to coexist peacefully and respectfully with Complaint as competitors in a similar field.
FINDINGS
The Complaint is dismissed. The first element is established, but Complainant has failed to establish the second element “Respondent has no rights or legitimate interests in respect of the domain name”.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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.
Identical and/or Confusingly Similar
This element is established and is not in dispute. The Panel accepts that Complainant has the requisite rights in the RANGER AMERICAN mark by virtue of its US Trademark Registrations and through use. The disputed domain name, disregarding the “.org” TLD, is confusingly similar to the RANGER AMERICAN mark.
Rights or Legitimate Interests
This element is not established.
Respondent is essentially arguing that it has the requisite rights or legitimate interests under this element because it uses the disputed domain name in connection with a bona fide offering of goods or services (Paragraph 4(c)(i) of the Policy) and/or it has been commonly known by the disputed domain name (Paragraph 4(c)(ii) of the Policy).
For completeness, the Panel notes that the circumstances of “rights and legitimate interests” laid down in Paragraph 4(c) of the Policy are not exhaustive. The Panel is entitled to consider holistically the materials before it in assessing whether Respondent has the requisite rights or legitimate interests under limb.
The Panel now addresses a number of points arising out of the parties’ contentions and evidence:
(i) Complainant contended that Paragraph 4(c)(ii) of the Policy requires Respondent to show that it was known by the disputed domain name, not merely that Respondent used the RANGER AMERICAN marks in some manner. In the Panel’s view, this interpretation of Paragraph 4(c)(ii) is too restrictive – there has been a body of UDRP decisions recognizing respondents’ arguments under this limb that the domain name can correspond to the respondent’s personal name, nickname, corporate identifier, etc. See Paragraph 2.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.
(ii) Complainant also contended that to succeed under Paragraph 4(c)(ii), Respondent must show that Respondent was commonly known by the disputed domain name before the registration of the disputed domain name. While the Panel accepts that if the disputed domain name was registered in bad faith, subsequent use of the disputed domain name by the respondent should not have conferred such rights or legitimate interests on the respondent, the consideration is different if the disputed domain name was not registered in bad faith (which in itself is sufficient to defeat a UDRP complaint). The Panel is entitled to look at the respondent’s use of the disputed domain name after its registration as part of its assessment as to whether such use is in good faith and/or in connection with a bona fide offering of goods or services.
(iii) The parties’ evidence is consistent with Respondent’s contentions that in or around 2008, Complainant’s predecessors abandoned the RANGER AMERICAN marks and thereafter Respondent registered the disputed domain name so as to continue servicing Ranger American equipment and monitoring. Complainant sought to rely on the earlier registration and continuous use of the domain names “rangeramerican.com” (registered in 1998) and “rangeramerican.net” (registered in 1999) by Complainant or its predecessors (Complainant also referred to its other domain name “rangeramerican-dallas.com” but that domain name was registered in 2013 and does not seem to be relevant on this point). However, the Panel sees no evidence which shows that the websites associated with those two domain names were displaying or otherwise used in relation to the RANGER AMERICAN marks around the relevant time during the 2008-2009 period. Complainant produced some screenshots of www.rangeramerican.net dated early 2008 which show the use of the RANGER AMERICAN marks, but the subsequent screenshots dated August 2008 and April 2009 show a rebranding message which says “Ranger American is now Guardian Protection”. On the other hand, the earliest website screenshot of www.rangeramerican.com adduced by Complainant was dated 2013, and the Panel is unable to tell whether or how this website was put into use during the relevant 2008-2009 period. In other words, there is no evidence before the Panel which contradicts Respondent’s submissions and evidence that he registered the disputed domain name in 2009 after his knowledge of the abandonment of the RANGER AMERICAN marks. The continuous/earlier registration of the domain names “rangeramerican.com” and “rangeramerican.net” by Complainant or its predecessors by itself (even if Respondent knew about those domain names, as alleged) is not a reason of barring Respondent from registering the disputed domain name.
(iv) Respondent asserted that he was commonly known by the RANGER AMERICAN name as early as in 2003 by reason of his acquisition of abandoned phone numbers by Ranger American in connection with his performance of repair work and activations of Ranger American equipment installations. The Panel finds that Respondent has not adduced much evidence in support of such early use. But leaving that aside, Respondent has produced credible evidence to show that since the registration of the disputed domain name in 2009, Respondent has consistently used the disputed domain name in relation to his business and that he also incorporated a company in 2014 under the name “RANGER AMERICAN, INC.”. Apparently, Respondent was able to continue with that business with reference to the disputed domain name without receiving any dispute from Complainant until the Previous Proceedings. The Panel considers that the evidence as a whole is sufficient to demonstrate Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services and/or that it has been commonly known by the disputed domain name.
(v) The Panel notices that Complainant alleged that Respondent’s website displays counterfeit versions of Complainant’s products. The Complainant’s supporting evidence is in the form of some screenshots dated 2023. In response, the Panel notes that it is not empowered to decide on such counterfeiting issues – those issues do not fall under the regime of UDRP proceedings. In light of the Panel’s finding that Respondent has demonstrated its bona fide offering of goods or services for a considerably long time period since the registration of the disputed domain name in 2009, it is difficult and unsafe for the Panel to rely on some relatively recent alleged counterfeit contents and disregard the evidence demonstrating Respondent’s use of the disputed domain name in connection with his bona fide offering of goods or services for a relatively long time period.
(vi) In sum, the Panel agrees with the panelist in the Previous Proceedings that the critical question is whether Respondent chose to register the disputed domain name in order to masquerade as Complainant or its predecessors or whether he did so in order simply to compete with them in the provision of monitoring services to existing users of Ranger American security systems. The Panel finds in favor of Respondent on this question. In fact, in the present proceedings, Respondent openly admitted that it does not deny Complainant’s right to the marks, but merely argued his concurrent common law rights.
Registration and Use in Bad Faith
Given the Panel’s decision under the second element, it is not necessary for the Panel to embark on an analysis of this third element. However, given the Panel’s analysis under the second element, the Panel would add that the Panel would have found that at least the registration of the disputed domain name was not in bad faith.
Reverse Domain Name Hijacking
As the Panel commented in the “Res Judicata” section, while there is a considerable overlap between the Previous Proceedings and the current proceedings, the circumstances and bases of this Complaint were different from those of the Previous Proceedings. It cannot be said that Complainant must have known that this Complaint cannot succeed. The Panel declines to make a finding of Reverse Domain Name Hijacking.
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 rangeramerican.org domain name REMAINS WITH Respondent.
Eugene I. Low, Panelist
Dated: October 19, 2023
