BODIS

#CloudInsure .com : #Domain was registered before the #trademark; UDRP included a chronology of events

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UDRP has been denied.

UDRP cases that involve a claimed registered trademark usually emphasize the mark’s fame at the time the domain was registered.

In cases where the domain’s registration predates that of the mark, it’s a good idea to outline the chronology of events.

The decision for the UDRP case on CloudInsure.com incorporates such a chronology, whether it was created by the Respondent or the panelist.

A list of important events, such as the registration date of the domain and the mark, can affect the outcome of the UDRP.

In this case, the chronology made things very obvious:

3/17/10 Domain Name First Registered
10/1/11 Complainant LLC Formed
11/14/12 Filing Date TM Application by Complainant
11/30/13 First Claimed Use of Mark by Complainant
2/3/15 Complainant TM Registration on U.S. Supplemental Register
12/17/18 Complainant Filed Complaint

The sole panelist at the National Arbitration Forum used this timeline to decide in favor of the Respondent:

“The Panel further finds that Respondent has not registered or used the <cloudinsure.com> domain name in bad faith as it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  […] Respondent further contends that it did not register or use the <cloudinsure.com> domain name in bad faith as its registration of the disputed domain name predates. Predating may preclude a complainant’s claim of bad faith against the respondent. […] The Panel may therefore find Respondent did not register or use the disputed domain name in bad faith per Policy ¶ 4(a)(iii).”

Final decision: the Respondent keeps the domain. Full details on this decision for CloudInsure.com follow:

CyberRiskPartners, LLC v. Drew Bartkiewicz / Drew

Claim Number: FA1812001821394

PARTIES

Complainant is CyberRiskPartners, LLC (“Complainant”), represented by Arthur P. Herold, Jr., Florida, USA. Respondent is Drew Bartkiewicz, pro se (“Respondent”), Connecticut, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cloudinsure.com>, registered with Tucows Domains 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.

M. KELLY TILLERY, ESQUIRE as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 17, 2018; the Forum received payment on December 17, 2018.

On December 17, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <cloudinsure.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 December 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2019 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@cloudinsure.com. Also on December 20, 2018, 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 January 9, 2019.

On January 14, 2019, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. KELLY TILLERY, ESQUIRE 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 uses the CLOUDINSURE mark in its connection with its business. Complainant has rights in the CLOUDINSURE mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Supplemental Register Reg. No. 4,682,961, registered Feb. 3, 2015). Respondent’s <cloudinsure.com> domain name is identical to Complainant’s mark, except for the addition of a “.com” generic top-level domain (“gTLD”).

Respondent has no rights or legitimate interests in the <cloudinsure.com> domain name as Respondent has no ownership interest in Complainant’s business.

Respondent registered and uses the <cloudinsure.com> domain name in bad faith. Respondent registered the disputed domain name without Complainant’s permission.

B. Respondent

Respondent registered and used the <cloudinsure.com> domain name prior to Complainant’s business formation and its trademark registration. Respondent has owned and operated the disputed domain name since March, 2010.

Complainant fails to provide evidence of infringement or Respondent’s lack of rights or legitimate interests.

Respondent did not register or use the <cloudinsure.com> domain name in bad faith. Respondent has never attempted to sell the disputed domain name to Complainant or the general public. Respondent does not display any content at the disputed domain name’s resolving website that could create consumer confusion. The disputed domain name was registered on March 17, 2010.

FINDINGS

1) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is identical to a Trademark in which Complainant has rights.

2) Complainant has not met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.

3) Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name has been registered and is being used in bad faith.

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

Relevant Chronology

3/17/10 Domain Name First Registered

10/1/11 Complainant LLC Formed

11/14/12 Filing Date TM Application by Complainant

11/30/13 First Claimed Use of Mark by Complainant

2/3/15 Complainant TM Registration on U.S. Supplemental Register

12/17/18 Complainant Filed Complaint

Complainant claims rights in the CLOUDINSURE mark based upon registration of the mark with the USPTO on the Supplemental Register (e.g., Reg. No. 4,682,961, registered Feb. 3, 2015). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (registration with USPTO sufficient to establish complainant’s rights in HOME DEPOT mark). In addition, Respondent does not dispute that Complainant has rights. The Panel therefore holds that Complainant’s registration of the CLOUDINSURE mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

Complainant next argues Respondent’s <cloudinsure.com> domain name is identical to the CLOUDINSURE mark, as the name merely adds a “.com” gTLD to the mark. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (“Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). In addition, Respondent does not dispute that the domain name is identical to the mark. The Panel therefore determines that the <cloudinsure.com> domain name is identical to the CLOUDINSURE mark per Policy ¶ 4(a)(i).

Respondent claims that the site to which the domain name resolves does not promote any activity which would cause confusion with that of Plaintiff. While that may be true and relevant to a trademark infringement analysis, it is not relevant here as the marks are identical and that suffices under this first prong of the UDRP.

Respondent contends that its registration of the <cloudinsure.com> domain name predates Complainant’s earliest claimed rights in the CLOUDINSURE mark. Respondent’s disputed domain name was created on March 17, 2010, about one year and seven months before Complainant LLC was even formed. While there is some authority that predating of a complainant’s earliest claimed rights in a mark may preclude a complainant’s asserted rights in a mark under Policy ¶ 4(a)(i), See Twin Lakes Telephone Cooperative Corporation v. DNS ADMIN / BEST WEB LIMITED, FA 1725012 (Forum May 23, 2017) (complainant failed to establish rights in the TWIN LAKES COMMUNICATION marks for purposes of the policy, because registration of respondent’s domain name predated registration of complainant’s mark by approximately five years), such does not govern here as there is no evidence of record of actual use (only registration) prior to Complainant’s use.

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (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) (“Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”.)

Complainant here fails to make any assertions or produce any evidence regarding Policy ¶ 4(c)(ii). However, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017)

The WHOIS information of record identifies the Registrant of the at-issue domain name as “Drew Bartkiewicz,” and no evidence of record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. Respondent also does not claim to either be commonly known by the domain name or to have been authorized by Complainant to register or use the domain name. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <cloudinsure.com> domain name.

Complainant fails to make any assertions or produce any evidence under Policy ¶¶ 4(c)(i) or (iii). Failure to make assertions or produce evidence may preclude a complainant’s claim under Policy ¶ 4(a)(ii). See Larry S. Nichter, M.D. and Jed H. Horowitz, M.D., a Medical Corporation, DBA Pacific Center for Plastic Surgery v. DOMAIN ADMINISTRATOR / THOUGHT CONVERGENCE, INC., FA 1702547 (Forum Jan. 3, 2017) (finding for respondent when complainant failed to adequately allege respondent’s lack of rights and legitimate interests in the disputed domain name); see also Tech Traders LLC / David Page v. Insuladd Environmental Products, FA 1738720 (Forum Aug. 3, 2017) (respondent had overcome complainant’s contentions under the Policy, because complainant failed to make the required prima facie showing of respondent’s lack of rights and legitimate interests in the disputed domain name).

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) (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) (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).

In addition, Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant makes no arguments and produces no evidence under Policy ¶ 4(a)(iii). Failure to assert and support with evidence a respondent’s bad faith registration or use may allow a Panel to find for the respondent. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Builder’s Best Inc. v. Okada, D2004-0748 (WIPO Nov. 17, 2004) (“…[T]o warrant a finding of bad faith under the Policy, in general, there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark, not just ‘someone’s’ mark.”).

The Panel finds that Complainant has 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).

Since Respondent’s registration of <cloudinsure.com> domain name predates Complainant’s first claimed rights in the CLOUDINSURE mark, Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), and 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 concludes that Respondent has rights or legitimate interests in the <cloudinsure.com> domain name pursuant to Policy ¶ 4(a)(ii), and 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) (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) (because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).

The Panel further finds that Respondent has not registered or used the <cloudinsure.com> domain name in bad faith as it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith); 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 further contends that it did not register or use the <cloudinsure.com> domain name in bad faith as its registration of the disputed domain name predates. Predating may preclude a complainant’s claim of bad faith against the respondent. See Gumwand Inc. v. jared brading, FA 1794058 (Forum Aug. 6, 2018) (“Any rights Complainant may have acquired in the GUMWAND mark since its first use in commerce in February 2014 were not in existence in 2012 when the Domain Name registration occurred. Thus, there is no evidence that Respondent registered the Domain Name in bad faith.”). The Panel may therefore find Respondent did not register or use the disputed domain name in bad faith per 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 <cloudinsure.com> domain name REMAIN WITH Respondent.

M. KELLY TILLERY, ESQUIRE, Panelist

Dated: January 17, 2019


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