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Cloak vs Cloak: Two app makers battled it out via the #UDRP process

Two different app makers using the term “Cloak” for their apps battled it out in the UDRP field.

The domain JoinCloak.com was deemed to be interfering with Ruby Life, Inc. and its Cloak app that provides a platform for social interaction and anonymous dating.

Meanwhile, Cloak Communications LLC, is a social media company based out of Colorado that created a communication platform offering anonymity.

According to the UDRP response, their rights in the CLOAK mark predate Complainant’s rights in the mark based upon their respective trademark application dates and use of the mark in commerce.

Unlike the previous use of a common law mark that we covered yesterday, this one failed to convince the National Arbitration panelist, who delivered a finding favoring the respondent.

The domain transfer was denied.

Final decision: deny transfer of the domain JoinCloak.com to the Complainant.

Ruby Life Inc. v. Justin O’Riordon / Growfio

Claim Number: FA2103001936217

PARTIES

Complainant is Ruby Life Inc. (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is Justin O’Riordon / Growfio (“Respondent”), represented by Cloak Communications LLC, Colorado, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <joincloak.com>, registered with NameCheap, Inc.

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.

Lars Karnøe as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 11, 2021; the Forum received payment on March 11, 2021.

On March 11, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <joincloak.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2021 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@joincloak.com. Also, on March 15, 2021, 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 March 16, 2021.

On March 23, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Lars Karnøe as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Ruby Life Inc., offers a variety of dating services. Complainant has common law rights in the CLOAK mark based upon long term use of the mark. Respondent’s <joincloak.com> domain name is identical or confusingly similar to Complainant’s CLOAK mark as it wholly incorporates the mark, merely adding the generic terms “join” as well as the “.com” generic top-level domain (“gTLD”).

Respondent lacks rights and legitimate interests in the <joincloak.com> domain name as Complainant has exclusive rights in the CLOAK mark and has not licensed or otherwise permitted Respondent to use the CLOAK mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent harms Complainant’s business by misdirecting consumers to a competing webpage.

Respondent registered and use the <joincloak.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by offering competing dating services. Additionally, the timing of Respondent’s domain name registration suggests opportunistic bad faith. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CLOAK mark.

B. Respondent

Respondent, Cloak Communications LLC, is a social media company based out of Colorado. Respondent’s rights in the CLOAK mark predate Complainant’s rights in the mark based upon their respective trademark application dates and use of the mark in commerce.

Respondent has rights and legitimate interests in the <joincloak.com> domain name as it is commonly known by the name and has rights in the CLOAK mark based upon its application for a trademark with the USPTO. Respondent uses the disputed domain name legitimately in connection with its own social networking and messaging app.

Respondent did not register or use the <joincloak.com> domain name in bad faith. Respondent does not use the disputed domain name to disrupt Complainant’s business of attract users for commercial gain as Respondent’s domain name does not create confusion with Complainant and Respondent’s services are unrelated to those of Complainant. Further, Respondent’s registration of the disputed domain name does not constitute opportunistic bad faith as Respondent conducted a search for similar marks and similarly named applications prior to registration and found no information about Complainant.

FINDINGS

Identical or Confusingly Similar

Complainant asserts common law rights in the CLOAK mark based upon long term use of the mark. Registration of a mark is unnecessary under Policy ¶ 4(a)(i) when a complainant can show that it has acquired common law rights in a mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Common law rights may be shown by evidence that the mark has acquired a secondary meaning. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant asserts it has established common law rights in the CLOAK mark based upon the long-term success and continuing growth of its social introduction and dating brands. Complainant provides a screenshot of its website and claims the CLOAK mark has been used in commerce since September 10, 2020.

However, the Panel finds no dated documentation in the annexes filed by the Complainant that supports the asserted use in commerce since September 10, 2020. the Panel finds that the priority date of any rights of the Complainant in the CLOAK mark per Policy ¶ 4(a)(i) is not documented.

Complainant argues that Respondent’s <joincloak.com> domain name is identical or confusingly similar to Complainant’s CLOAK mark as it wholly incorporates the mark, merely adding the generic terms “join” as well as the “.com” gTLD. See Addition of generic and/or descriptive terms and a gTLD does not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel find that the disputed domain name is in principle identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

The question concerning priority when comparing the CLOAK mark of the Complainant to the domain name <joincloak.com> of the defendant at which point the Respondent argues that its disputed domain name was registered prior to Complainant’s alleged rights in the mark is not applicable under Policy ¶ 4(a)(i), the argument will be dealt with under Policy ¶ 4(a)(iii).

Rights and Legitimate Interests

The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). 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).

Respondent claims rights and legitimate interests in the <joincloak.com> domain name as it is commonly known by the name and has rights in the CLOAK mark based upon its application for a trademark with the USPTO. A respondent may be found to be commonly known by a disputed domain name where the respondent does business under a name similar to the disputed domain name. See Navigant Consulting, Inc. v Bradley Shive / Navigant Technologies, FA 1587953 (Forum Dec. 17, 2014) (finding that respondent had rights and legitimate interests in the <naviganttechnologies.com> and <naviganttech.com> domain names because respondent had provided evidence of doing business as “Navigant Technologies” “before Complainant’s registration of its NAVIGANT marks and before receiving a notice of [the domain] dispute”). Here, Respondent notes that it registered “Cloak Communications LLC” prior to filing a trademark application for the CLOAK mark. The Panel therefore finds that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

Respondent argues that it uses the <joincloak.com> domain name legitimately in connection with its own social networking and messaging app. Use of a disputed domain name in connection with a legitimate business may show rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Workshop Way, Inc. v. Harnage, FA 739879 (Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

Respondent argues that it plans to use the disputed domain name in connection with an anonymous social networking app set to launch in the near future – in May 2021 according to the website at <joincloak.com>. The Panel finds that Respondent has rights and legitimate interest in the disputed domain name based upon the planned use of the domain.

Registration and Use in Bad Faith

The Panel finds that the Complainant failed to meet the 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).

Referring to the point on priority touched upon by the panel under Policy ¶ 4(a)(i) above, the Panel note that if Respondent’s registration of the <joincloak.com> domain name predates Complainant’s first claimed rights in the CLOAK mark, 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. 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 finds that the Complainant has not presented evidence supporting, in the view of the Panel, that the first claimed rights of the Complainant in the CLOAK mark predates Respondent’s registration of the disputed domain <joincloak.com>.

As the Panel also concludes that Respondent has rights or legitimate interests in the <joincloak.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel furthermore finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).

Respondent argues that it does not use the <joincloak.com> domain name to disrupt Complainant’s business or attract users for commercial gain as Respondent’s domain name does not create confusion with Complainant. Use of a disputed domain name for a legitimate offering of goods or services unrelated to a complainant’s business generally does not show bad faith per Policy ¶ 4(b)(iii) or (iv). See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created). Here, Respondent argues that it uses the disputed domain name in connection with its planned social media app, which does not offer competing dating services as claimed by Complainant. Further, Respondent argues that Complainant’s website does not mention “cloak” as one of Complainant’s brands. The Panel therefore agrees that Respondent makes a good faith use of the dispute domain.

Further, Respondent argues that its registration of the <joincloak.com> domain name does not constitute opportunistic bad faith as Respondent conducted a search for similar marks and similarly named applications prior to registration and found no information about Complainant. Findings of opportunistic bad faith and actual knowledge must be supported by sufficient evidence. See Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Forum Aug. 5, 2002) (finding that because the complainant’s mark was not particularly well-known outside of its field, and the complainant failed to show that the respondent knew or should have known about the complainant at the time of registration, the respondent did not register the domain name in bad faith). Here, Respondent argues that it conducted both a trademark and Internet search prior to starting its business and found no social media platforms or registered trademarks for “cloak.” Respondent argues that there was therefore no reason for Respondent to know of Complainant at the time of domain name registration.

The Panel finds in conclusion that with no evidence supporting the allegations of the Complainant, the Respondent’s actions don’t suggest bad faith registration and use of the disputed 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 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

Leaving out the priority of the claimed rights of the parties the Panel finds that the disputed domain name is in principle identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). The respondent does business under a name similar to the disputed domain name. The Panel finds that Respondent has rights and legitimate interests in the disputed domain name based upon the planned use of the domain.

Registration and Use in Bad Faith

The Panel finds that the Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). The Panel finds that the Complainant has not presented evidence supporting, in the view of the Panel, that the first claimed rights of the Complainant in the CLOAK mark predates Respondent’s registration of the disputed domain <joincloak.com>. The Panel note that if Respondent’s registration of the <joincloak.com> domain name predates Complainant’s first claimed rights in the CLOAK mark, 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.

As the Panel also concludes that Respondent has rights or legitimate interests in the <joincloak.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel furthermore finds that Respondent did not register or use the disputed domain name in bad faith pursuant to 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 <joincloak.com> domain name REMAIN WITH Respondent.

Lars Karnøe, Panelist

Dated: April 6, 2020


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