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#Canarchy .com : Craft beer maker pops a negative #UDRP decision

ZFBot

Transfer: Denied

Canarchy is a portmanteau of “can” and “anarchy” and a craft beer brand. Very clever.

That being said, the company’s registration of the mark was made 45 days after Canarchy.com was registered.

The company, CANarchy Craft Brewery Collective LLC, filed a UDRP to scoop up the domain name. The Complainant is using Canarchy.beer currently.

The sole panelist at the National Arbitration Forum, Carolyn Marks Johnson, noted what came first, the beer or the domain.

In fact, Respondent’s registration of the <canarchy.com> domain name predates Complainant’s first claimed rights in the CANARCHY mark, which is limited here if looking only at legal rights to the date on which the application for registration was made, even with a subsequent registration and finding of rights and legitimate interests. Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use, which does include passive holding.

The decision delivered a finding favoring the Respondent, and the domain’s transfer was denied. Full details follow:

CANarchy Craft Brewery Collective LLC v. Martin Bowen

Claim Number: FA1906001847766

PARTIES

Complainant is CANarchy Craft Brewery Collective LLC (“Complainant”), represented by Katherine Froelicher of CANarchy Craft Brewery Collective LLC, Colorado, USA. Respondent is Martin Bowen (“Respondent”), Arkansas, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <canarchy.com>, registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically June 13, 2019; the Forum received payment June 13, 2019.

On June 14, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <canarchy.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On June 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2019, by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@canarchy.com. Also on June 19, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 July 10, 2019, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum 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’s Contentions in this Proceeding:

Complainant operates in the craft beer industry. Complainant asserts rights in the CANARCHY mark based upon filing for registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <canarchy.com> domain name contains the main portion of Complainant’s legal name and the portion that Complainant uses on its website, email address, and product logos.

Respondent lacks rights and legitimate interests in the <canarchy.com> domain name because Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use by making any demonstrable preparations to use the disputed domain name.

Respondent registered and uses the <canarchy.com> domain name in bad faith because Respondent uses the disputed domain name’s resolving webpage to host an inactive webpage.

B. Respondent’s Allegations in this Proceeding:

Respondent did not submit a response. The Panel notes that Respondent registered the <canarchy.com> domain name April 25, 2017, which predates Complainant’s filing for registration of the CANARCHY mark June 9, 2017 by 45 days.

FINDINGS

Complainant asserts rights and legitimate interests in the CANARCHY mark based on its use in its product identification, its email address, and its website. Further, Complainant registered the mark some 45 days after Respondent registered the domain name. The Panel finds Complainant has shown legitimate interests in the mark. The Panel also finds that Respondent did not file a response or otherwise offer proof of any rights and the Panel finds that Respondent has no rights or legitimate interests. The Panel notes that Complainant’s claim of rights does not identify whether Complainant relies merely on legal rights resulting from filing or common law rights resulting from a showing of use such as would acquire secondary meaning for its mark.

Respondent registered a domain name some 45 days before Complainant filed to register the mark with the United States Patent and Trademark authorities and no final affirmative action has yet been had on that registration. The domain name is confusingly similar to Complainant’s mark in which Complainant has shown legitimate interests given Complainant’s development of product logo using the mark and a website and an email address identical to the mark.

Respondent registered the disputed domain name and has held it passively since that time.

The domain name is confusingly similar to the mark in which Complainant has legitimate interests given the identical nature to Complainant’s product, email, and website.

Passive holding of a confusingly similar disputed domain name supports findings of bad faith registration and “use” and/or holding. The Panel declines to find bad faith by using inference in the absence of any evidence in support but mere conclusory statements.

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 Complainant to 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.

Given 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 will draw such inferences as the Panel 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; but 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”). This may well be a case in which Respondent could have prevailed on the earlier in time filing; however, Respondent brings not a scintilla of proof to the proceeding.

Identical or Confusingly Similar:

Complainant asserts rights in the CANARCHY mark based upon filing for registration of the mark with the United States Patent and Trademark Office. Pending trademark applications do not confer rights under Policy ¶ 4(a)(i). See 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).”).

Once legal rights are recognized after registration, those rights date back to the date of filing only. A complainant would have to prevail on a showing of common law rights through use sufficient to establish secondary meaning for the mark. Although Complainant’s prima facie case is light, Respondent offered no evidence to contradict Complainant’s allegations. The factors that lift Complainant’s allegation from the mere conclusory to sufficient for a finding of rights are the identical nature of the name, the alleged identical website, the alleged identical email and the alleged identical logo on Complainant’s product. The Panel finds that Complainant’s proof is sufficient for the Panel to find that Complainant has rights through legitimate interests it evidences in the mark, satisfying ICANN Policy ¶ 4(a)(i).

Respondent makes no contentions relative to Policy ¶ 4(a)(i).

The Panel finds that Respondent registered and passively holds a confusingly similar domain name containing the mark Complainant has made active use of and is currently registering; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

Rights or Legitimate Interests:

Complainant must first make a prima facie case that Complainant has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden of proof shifts to Respondent to show it does have such 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 also is required to make a prima facie case that Respondent lacks rights and legitimate interests in respect of an at-issue domain name [and if so], then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.)

Complainant argues Respondent lacks rights and legitimate interests in the <canarchy.com> domain name because Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services. When a respondent is not using a disputed domain name in connection with an active website, or is passively holding it, the Panel may find that respondent is not using the disputed domain name for a bona fide offering of goods or services and thus cannot show rights. See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). The Panel notes that Complainant does not provide evidence of Respondent’s current use or lack thereof of the webpage. However, the Panel finds that, taking Complainant’s allegations as true, because they are not contradicted, and noting the identicality with Complainant’s product logo, email, and website, that Respondent lacks rights and legitimate interests in the <canarchy.com> domain name.

Complainant’s prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii) is weak, but Respondent does not contradict it and the identical nature of the domain, the claimed mark, the product logo, the email, and the website lead The Panel to find Complainant’s case sufficient to support rights in Complainant.

Respondent might have come forward in this case with a response and some evidence not known to us to provide support for a contrary resolution and cases would have supported Respondent. See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services). However, the Panel finds no such proof offered.

Respondent makes no contentions relative to Policy ¶ 4(a)(ii).

The Panel finds that Complainant established legitimate interests giving rise to rights and that Respondent, who registered and passively holds a domain name that is confusingly similar to Complainant’s mark, has no such rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith:

Complainant urges that Respondent registered and uses the <canarchy.com> domain name in bad faith because Respondent uses the disputed domain name to host an inactive holding, or passively holds the mark. Failure to actively use a domain name may be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).

The Panel here notes, however, that Complainant offered no evidence to support its claims of Respondent’s current use and/or passive holding and without some proof in support, the Panel cannot find that Respondent registered and uses the disputed domain name in bad faith. The Panel found no affirmative extrinsic evidence offered by Complainant of passive holding. 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).

In fact, Respondent’s registration of the <canarchy.com> domain name predates Complainant’s first claimed rights in the CANARCHY mark, which is limited here if looking only at legal rights to the date on which the application for registration was made, even with a subsequent registration and finding of rights and legitimate interests. Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use, which does include passive holding. 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. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).

The Panel here is reminded that Respondent registered the <canarchy.com> domain name April 25, 2017, which predates Complainant’s filing for registration of the CANARCHY mark June 9, 2017. The Panel finds that the documents on their face are sufficient to support findings of Complainant’s rights and legitimate interests in this mark. The Panel has also found that Respondent has no such rights based on the identical nature of the mark, the product logo, the email and Complainant’s website. Notwithstanding, the Panel finds that the Policy is not promoted by a finding of bad faith by inference or on constructive proof, when no extrinsic proof has been attempted in the form of documents, records of events, and/or conduct sufficient to support the claim it is being held passively in bad faith. Even if the sole basis is passive holding, a complainant should come forward with documents to show what is there or the absence of use. In fact, while an inference may support a finding of rights, legitimate interests and/or no rights or interests based on the disputed domain name being identical by name to the mark used and the failure, for instance, to make a prima case in response and/or to show bona fide use, the punitive nature of bad faith and the fact that it lives on in the annals of ICANN as a mark against a person and/or entity so found that is difficult if not impossible to purge in all subsequent cases in which that Internet user may be involved; and can be proof of bad faith in another case; and attaches itself to all future actions of a person and/or entity has led other Panels and this one to the general view that bad faith should be supported by extrinsic proof and not just inferred by a conclusory statement of bad faith. Bad faith, as a designated conduct, should have substance and should not be lightly imposed. Therefore, this Panel declines to find bad faith registration and use through passive holding by Respondent in this case where complainant did not come forward with extrinsic evidence to support even that the domain name is being passively held. Further, no evidence in the record places Respondent’s conduct within the structure of the factors listed in Policy ¶ 4(b) and no series of acts constitute bad faith registration and use such as would satisfy Policy ¶ 4(a)(iii) or be considered to be by the totality of the circumstances. See also Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under Policy ¶ 4(a)(iii)).

Respondent makes no contentions relative to Policy ¶ 4(a)(iii).

The Panel finds that Complainant did not support with sufficient proof its allegations of passive holding such as would give rise to bad faith under the Policy and/or in the totality of the circumstances; Complainant failed to satisfy the requirement of ICANN Policy ¶ 4(a)(iii).

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 <canarchy.com> domain name REMAIN WITH Respondent.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 23, 2019


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