ATVtracksystems.com: Streak of WIPO victories for John Berryhill continues

IP attorney, John Berryhill, continued his recent streak of UDRP victories at the WIPO.

Representing the Respondent for the UDRP filed against the domain ATVtracksystems.com, Mr. Berryhill pointed out that the Complainant didn’t have “clean hands” when they registered domains incorporating various ATV brands and pointed them to their web site; yet, they raise an issue with the Respondent’s generic domain name:

“Finally, Respondent raised a defense of unclean hands, alleging that Complainant registered eleven domain names that incorporate the names of famous brands of ATV tracks, including <tatou4stracks.com>, <camoplastatvparts.net>, and <polarisrangertracks.net>. According to Respondent, these domain names redirected to Complainant’s website until shortly before Respondent filed its Response.”

A three member panel found the Complainant’s claims to be unsubstantiated and ordered the domain ATVtracksystems.com to remain with the Respondent.

The domain transfer was denied.

ATVTracks.net Property, LLC v. Domains By Proxy, LLC, DomainsByProxy.com / Chad Green, FPNW
Case No. D2021-1774

1. The Parties

Complainant is ATVTracks.net Property, LLC, United States of America (“United States” or “U.S.”), represented by Lee & Hayes, United States.

Respondent is Domains By Proxy, LLC, DomainsByProxy.com, United States / Chad Green, FPNW, United States, represented by John Berryhill, Ph.d., Esq., United States.

2. The Domain Name and Registrar

The disputed domain name, <atvtracksystems.com>, is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2021. On June 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 10, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 15, 2021.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2021. The Response was filed with the Center on June 28, 2021.

The Center appointed David H. Bernstein, Georges Nahitchevansky, and Richard G. Lyon as panelists in this matter on September 20, 2021. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On September 27, 2021, Complainant requested leave to file a supplemental submission to address Respondent’s argument that Complainant as an entity was not in existence at the time of Respondent’s employment with Complainant and/or its predecessor in interest. Complainant indicated that its proposed supplementary filing would explain the unity of control over the relevant domain name and trademark and identify the entity employing Respondent, as well as explain the chain of title of use of the relevant domain name and trademark. The Panel issued Administrative Panel Procedural Order No. 1 to deny Complainant’s request because the issues Complainant sought to address could have been anticipated in the Complaint. As the decision below will make clear, the Panel also concluded that, even if Complainant had included that information in the Complaint, it would not have affected the outcome of this proceeding.

4. Factual Background

Complainant and Respondent are both located in Spokane, Washington, and both sell aftermarket accessories called “tracks” or “track systems” for all-terrain vehicles (“ATVs”). ATV track systems replace the wheels of an ATV to improve traction in snow and mud.

In light of the particular facts of this case, and for emphasis, the Panel has capitalized letters below not normally capitalized in a domain name.

Complainant owns the domain name <ATVTracks.net>. Complainant and its predecessor have used that domain name continuously since 2005 to sell ATV tracks. Complainant also sells ATV tracks through its physical store in Spokane.

Respondent registered the disputed domain name, <ATVTrackSystems.com>, on September 4, 2016. Respondent uses that domain name to sell competing ATV track systems.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has common law trademark rights in the name ATVTRACKS.NET and that the disputed domain name, <ATVTrackSystems.com>, is confusingly similar to Complainant’s mark. Complainant stated that the ATVTRACKS.NET mark has been in continuous use since 2005 and had acquired distinctiveness by the time Respondent registered the disputed domain name in 2016. In support of its contentions, Complainant cited an April 2021 determination by an examining attorney of the U.S. Patent & Trademark Office (“USPTO”) that ATVTRACKS.NET had acquired distinctiveness.

Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain name because Complainant has not authorized Respondent to use Complainant’s mark or to operate the disputed domain name, Respondent’s use of the disputed domain name has not been in connection with a bona fide offering of goods or services, Respondent has not been commonly known by the disputed domain name, and Respondent has not made a legitimate noncommercial or fair use of the disputed domain name. In support of these contentions, Complainant alleges that Respondent Chad Green was employed by Complainant from 2016 to 2017, and that Respondent registered the disputed domain name during his employment with Complainant, unbeknownst to Complainant. Complainant further alleges that, after Respondent’s employment with Complainant ended, Respondent launched his website at the disputed domain name, through which Respondent sells the same products that Complainant sells, with the intent to trade on the goodwill of Complainant’s mark and divert consumers away from Complainant’s website. Complainant also alleges that the design of Respondent’s website is similar in certain respects to Complainant’s website and that actual consumer confusion has occurred, citing handwritten notes by employees of Complainant that allegedly document instances of consumer confusion between Complainant and Respondent.

Finally, Complainant contends that Respondent registered and used the disputed domain name in bad faith, because Respondent registered the disputed domain name to disrupt Complainant’s competing business and to divert consumers from Complainant’s website for Respondent’s commercial gain by intentionally creating a likelihood of confusion with Complainant’s mark. In support of these contentions, Complainant again alleges that Respondent registered the disputed domain name in secret during his employment with Complainant, that Respondent operates a website at the disputed domain name that competes with Complainant’s website, that certain design elements of Respondent’s website at the disputed domain name are similar to Complainant’s website, and actual consumer confusion has resulted from Respondent’s use of the disputed domain name.

B. Respondent

Respondent Chad Green is a principal of Emerge Innovation LLC, a Washington company that has operated Internet retail businesses since 2003. Respondent currently sells track systems for ATVs through the website to which the disputed domain name resolves.

Respondent contends that Complainant has no trademark rights in the name ATVTRACKS.NET. First, Respondent argues that Complainant has not used ATVTracks.net as a trademark, citing Complainant’s descriptive use of the term “ATV tracks” on its website and alleging that Complainant does not use the phrase as a brand name. Second, Respondent argues that ATVTRACKS is a widely-used and purely descriptive term used in Respondent’s and Complainant’s industry to refer to the products sold by both parties and that Complainant may not monopolize a common descriptive phrase. Third, Respondent argues that Complainant has not presented sufficient evidence establishing that its mark has acquired distinctiveness, providing evidence that Complainant has existed for less than five years and citing the “heavy burden” placed on Complainant to prove that descriptive marks have acquired distinctiveness.

Respondent further contends that it has rights in the disputed domain name because it made a bona fide use of the disputed domain name prior to Complainant’s filing of the Complaint. Respondent argues that it is entitled to use the term “ATV track systems” in its domain name because it is a common and industry-standard term, and Respondent’s use of the phrase in the disputed domain name merely describes the goods sold through Respondent’s website. In further support of Respondent’s argument that its use of the disputed domain was bona fide, Respondent cites the fact that its 2016 registration of the disputed domain name pre-dates Complainant’s formation in March 2017 and that Complainant has not provided evidence of Complainant’s chain of title to the ATVTRACKS.NET mark.

Lastly, Respondent contends that it did not register or use the disputed domain name in bad faith. Respondent argues that it is entitled to use the disputed domain name to sell goods described by the name. Respondent also contends that Complainant failed to present evidence establishing that Respondent intended to and is diverting consumers from Complainant’s website. Respondent further argues that the risk of confusion between Complainant and Respondent is inherent in Complainant’s decision to use a generic or descriptive term for its business. Finally, Respondent raised a defense of unclean hands, alleging that Complainant registered eleven domain names that incorporate the names of famous brands of ATV tracks, including <tatou4stracks.com>, <camoplastatvparts.net>, and <polarisrangertracks.net>. According to Respondent, these domain names redirected to Complainant’s website until shortly before Respondent filed its Response.

6. Discussion and Findings

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.
A. Identical or Confusingly Similar

The Panel finds that the disputed domain name, <ATVTrackSystems.com>, is confusingly similar to a trademark in which Complainant has common law rights, ATVTRACKS.NET.

Complainant has two trademark applications pending with the USPTO for ATVTRACKS.NET. These pending trademark applications would not normally be sufficient, by themselves, to establish trademark rights under the first element of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.4. Complainant offers additional evidence, though. Of greatest relevance is the finding by the Trademark Examiner in connection with application serial no. 88/829,003 that the mark ATVTRACKS.NET had acquired distinctiveness by April 2021, when the USPTO made its finding of acquired distinctiveness. Although that mark is still under examination, this finding is evidence that the USPTO views the ATVTRACKS.NET mark as descriptive (rather generic) and that the USPTO believes the mark has acquired distinctiveness.

A finding that a descriptive mark has acquired distinctiveness is sufficient, under United States law, to establish trademark rights. See, e.g., id. section 1.3 (a complainant can establish common law trademark rights by “show[ing] that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services”).

One complexity with this evidence is that application serial no. 88/829,003 was filed by Gerald Bauch, not by Complainant. That application is for ATVTRACKS.NET for “land vehicle structural parts for ATVs,” claiming first use as of January 1, 2005. Complainant itself has filed its own application for ATVTRACKS.NET (application serial no. 90/685/109) for the same goods and also for “On-line retail store services featuring track systems for all terrain vehicles; Retail store services featuring track systems for all terrain vehicles.” Although this discrepancy between the applicants of these two applications is unexplained, Mr. Bauch is identified in the Complaint as the managing member of Complainant. The Panel therefore finds that the applicants of these two applications are related, and that Complainant is entitled to benefit from the Trademark Examiner’s finding that the subject mark has acquired distinctiveness.

The Panel notes that this evidence does not establish that the ATVTRACKS.NET mark had acquired distinctiveness as of 2016, when Respondent registered the disputed domain name. Rather, it only establishes that Complainant had trademark rights by April 2021. Although that issue may be relevant under the second and third elements of the Policy, it does not impact the Panel’s conclusion under the first element because, to establish trademark rights under the first element, Complainant’s rights need only be established prior to the filing of the Complaint. Id. section 1.2.1.

Finally, the Panel concludes that the disputed domain name is confusingly similar to the name ATVTRACKS.NET. It is a close question because any trademark rights that Complainant has are narrow, and cover only the entirety of the mark, including the Top-Level Domain “.net”; Complainant has not shown any trademark rights in ATVTRACKS standing alone, which is generic when used in connection with ATV track systems. See generally United States Patent & Trademark Office v. Booking.com B.V., 140 S. Ct. 2298 (2020) (no trademark rights in generic term “booking” for website at which consumers can book travel reservations, but BOOKING.COM, when evaluated in its entirety, can be protected as a trademark if it has acquired distinctiveness). Nevertheless, a dominant portion of Complainant’s trademark is ATVTRACKS, and that portion is included in its entirety in the disputed domain name, <atvtracksystems.com>. See id. section 1.7 (“[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”).

Accordingly, the Panel concludes that Complainant satisfied its burden on the first element.

B. Rights or Legitimate Interests

Complainant has presented insufficient evidence to establish that Respondent lacks rights or legitimate interests in the disputed domain name.

Although, as noted above, Complainant has trademark rights in the ATVTRACKS.NET mark, those rights are narrow, given the highly descriptive nature of the mark. See WIPO Overview 3.0, section 1.3 (“Even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark rights, the strength of the complainant’s mark may be considered relevant in evaluating the second and third elements.”); see also USPTO v. Booking.com B.V., supra (trademark registration for BOOKING.COM is weak and cannot be used to prevent competitors from using the descriptive term “booking”). The disputed domain name is highly descriptive of a business that provides information about, or sells, ATV track systems, which is exactly the type of business Respondent operates through the disputed domain name. It would be inappropriate to give Complainant a wide monopoly over all domain names that incorporate the descriptive term ATVTRACKS.1 Thus, Respondent’s use of the disputed domain name to describe the goods sold through the domain would be bona fide, as long as it is not for the nefarious purpose of causing confusion or diverting Complainant’s business toward Respondent. See EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096.

The key question, then, is whether Respondent’s use of the disputed domain name was intended primarily to compete unfairly with Complainant’s business rather than simply to take advantage of a descriptive term. The Panel finds that, based on the limited information before it, there is insufficient evidence to conclude that Respondent’s use of the disputed domain name infringed on Complainant’s trademark rights or that it was otherwise illegitimate.

First, Complainant alleges that Respondent was a rogue employee of Complainant who registered the disputed domain name in secret and then later used the disputed domain name to compete with Complainant. Respondent counters that Complainant was not even incorporated at that time, and that Respondent instead worked for a company called Perfection Tire #5. First, the Panel notes that it is likely that Perfection Tire #5 was a predecessor to Complainant (the Internet Archive Wayback Machine shows that the <atvtracks.net> domain name was used as far back as 2004, and in 2016, was using the same logo as is used currently on Complainants website, see “https://web.archive.org/web/20160114180038/http://www.atvtracks.net/”). But, even if Respondent did work for Complainant’s predecessor at the time he registered the disputed domain name, that would not by itself support a finding of a nefarious purpose. Complainant has not shown that it had trademark rights in ATVTRACKS.NET as of 2016, when Respondent worked for Complainant’s predecessor. Further, Complainant could not establish any rights in ATVTRACKS as a trademark given that ATVTRACKS is a generic term for a website that sells ATV tracks. It is true that employees should not secretly plan to expropriate their employer’s trademark and start a competing business, see, e.g., Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino, WIPO Case No. D2007-0416 (respondent had no rights or legitimate interests when it expropriated competitor’s descriptive mark for a competing venture), but that principle does not extend to generic terms. Here, the timing of Complainant’s trademark application and the USPTO’s finding of acquired distinctiveness matter. No business can monopolize the use of generic terms, even by its employees. See generally WIPO Overview 3.0, section 2.10.1 (“In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. For example, a hypothetical respondent may well have a legitimate interest in the domain name <orange.com> if it uses the domain name for a website providing information about the fruit or the color orange.”).

Second, Complainant cites design similarities between Complainant’s and Respondent’s websites as evidence of Respondent’s illegitimate purposes. There are some design similarities between the home pages of the websites – specifically, both webpages have a blue bar at the top with a gray bar underneath it, a phone number displayed prominently in white text, and similar navigation categories. The Panel finds, however, that these similarities are relatively minor and not sufficient to establish that Respondent’s offering of goods through the disputed domain name is illegitimate. They certainly would not amount to copyright infringement, and Complainant has not offered any evidence that the trade dress of its website is protectable.

Third, Complainant offers evidence that at least some consumers have confused Complainant and Respondent. That evidence is not terribly persuasive, as it is the hearsay evidence of Complainant’s employees and is presented as somewhat vague handwritten notes without any specific details of the incidents. But even if the notes do demonstrate that there has been some confusion between Complainant and Respondent, that is an inevitable consequence of Complainant’s decision to use a generic or highly descriptive term as its mark and in its domain name. Respondent had apparently been using the term in its dictionary sense for a legitimate business for five years prior to the filing of the Complaint.

There is not sufficient evidence in the record before the Panel to find, by a preponderance of the evidence, that Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has not carried its burden of proof on the second element.

C. Registered and Used in Bad Faith

Complainant has not presented evidence sufficient to establish that Respondent registered and is using the disputed domain name in bad faith.

Respondent contends that Respondent registered the disputed domain name to disrupt Complainant’s competing business and divert consumers from Complainant’s website for Respondent’s commercial gain by creating a likelihood of confusion with Complainant’s mark. For the reasons explained above, the Panel finds that there is not enough evidence in the record to conclude that Complainant had common law trademark rights in 2016 when Respondent registered the disputed domain name or that Respondent acted in bad faith by registering the disputed domain name based on a generic term. This is particularly so given that Respondent is and has been using a domain name that consists of a generic term for the sale of the very items identified as the genus of ATV track systems.

The Panel is sympathetic to the disruption that Respondent’s business may be causing to Complainant, but on the evidence, that is a consequence of Complainant’s selection of a weak trademark, comprised of a generic term for the parties’ products plus a TLD. To the extent Complainant believes that the totality of Respondent’s actions, including the alleged instances of actual consumer confusion, might establish a claim of trademark infringement or unfair competition, as Complainant appears to suggest in its submissions, any such claim is more appropriately adjudicated in another forum and not through the UDRP.

Accordingly, the Panel finds that Complainant has not carried its burden of proof on the third element.

7. Decision

For the foregoing reasons, the Complaint is denied.

David H. Bernstein
Presiding Panelist

Georges Nahitchevansky
Panelist

Richard G. Lyon
Panelist
Date: October 4, 2021

1 Although the Panel has reservations as to whether Complainant established any common law rights in the mark ATVTRACKS.NET prior to the registration of the disputed domain name in 2016, such rights, if they existed, would have been quite narrow and would not alter the conclusion that “ATV tracks” is a descriptive term in which Complainant does not enjoy an exclusive monopoly.

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