A product that enables dogs to maintain traction on slippery surfaces is made available via the web site at DogToeGrips.com.
This is a legitimate product for our canine buddies but it contains the TOE GRIPS mark registered by another company.
Dr. Buzby’s Innovations LLC is a South Carolina limited liability company that markets, promotes and sells a patented toenail-grip product for dogs. They filed a UDRP to get the domain, citing rights to the TOE GRIPS mark.
The Respondent pointed out that at the time DogToeGrips.com was registered, the Complainant’s mark was only registered with the supplemental register, essentially having a non-enforceable trademark. However, the Complainant eventually managed to move the mark to the principal register at the USPTO.
Due to this fine detail or “lawyerism,” the NAF panelist found no issues with the domain’s registration and ordered the domain DogToeGrips.com to remain with the Respondent.
So which company makes a better product, ToeGrips.com or DogToeGrips.com? You need to determine that by using both products. 😀
The domain transfer was denied.
Dr. Buzby’s Innovations, LLC v. Scott McHenry
Claim Number: FA2105001943850
PARTIES
Complainant is Dr. Buzby’s Innovations, LLC (“Complainant”), represented by Mark C. Johnson of Johnson Dalal, Florida, USA. Respondent is Scott McHenry (“Respondent”), represented by Janet C. Moreira of MAVEN IP, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dogtoegrips.com> (the “disputed domain name”), registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on May 4, 2021; the Forum received payment on May 4, 2021.
On May 5, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dogtoegrips.com> disputed 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 May 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@dogtoegrips.com. Also on May 10, 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 May 31, 2021.
On June 3, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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.
On June 15, 2021, a mere two days before the decision in this proceeding was due, the Panel received the Complainant’s unsolicited additional submission from the Forum. The Panel has not accepted nor considered the additional submission pursuant to Forum Supplemental Rule 7 (“It is within the discretion of the Panel to accept or consider additional unsolicited submission(s).”).
RELIEF SOUGHT
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
First, Complainant is a South Carolina limited liability company that markets, promotes and sells a patented toenail-grip product for dogs. Complainant contends that it has rights in the TOEGRIPS trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,072,525 registered on June 9, 2020 on the Principal Register). Complainant also contends that it has common law rights in the trademark based on its continuous use since 2012 (hereinafter collectively referred to as the “TOEGRIPS Mark”.
Complainant also asserts that Respondent’s <dogtoegrips.com> disputed domain name is identical or confusingly similar to Complainant’s TOEGRIPS Mark because it incorporates the TOEGRIPS Mark in its entirety and merely adds the term “dog” in front of the trademark, and then adds the “.com” generic top-level domain (“gTLD”).
Second, Complainant claims that Respondent has no legitimate interests in the <dogtoegrips.com> disputed domain name since Respondent is not commonly known by the disputed domain name and Complainant has not licensed or otherwise authorized Respondent to use the TOEGRIPS Mark.
Third, Complainant further asserts that Respondent registered and is using the <dogtoegrips.com> disputed domain name in bad faith because Respondent is using the Complainant’s TOEGRIPS Mark in connection with the marketing, offering for sale, and sale of products that are in the same industry as, and competitive with, the Complainant’s products, and Respondent is commercially benefitting from its use of the disputed domain name by virtue of the sale of its competing toenail-grip products for dogs.
B. Respondent
Respondent is the owner of a Florida limited liability company that advertises, promotes, and sells a device that attaches to dogs’ toenails to provide traction to improve mobility on slippery floors and reduce pain and inflammation.
First, Respondent contends that Complainant has no enforceable rights in the TOEGRIPS Mark, as the mark was only registered on the Supplemental Register at the time the disputed domain name was created. Respondent does not dispute, however, that Complainant’s TOESGRIPS Mark had acquired distinctiveness at the time of the submission of the Complaint, when it was transferred to the Principal Register.
Second, Respondent claims that it has legitimate interests in the <dogtoegrips.com> disputed domain name because its use constitutes a right and interest under the Policy. Specifically, Respondent asserts that the generic words “dog”, “toe”, and “grips” in the disputed domain name are descriptive of Respondent’s goods, and therefore Respondent has rights and legitimate interests in the disputed domain name, and that Respondent uses it to sell goods related to the disputed domain name. Finally, Respondent also contends that the fact that Complainant and Respondent are competitors has no bearing on Respondent’s rights and legitimate interests in the <dogtoegrips.com> disputed domain name.
Third, Respondent contends that it has not registered and is not using the <dogtoegrips.com> disputed domain name in bad faith because Complainant fails to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). Again, Respondent claims that it uses the disputed domain name to sell goods that it legitimately promotes on its website and that the disputed domain name is comprised entirely of common or generic terms.
FINDINGS
First, the Panel finds that Complainant has demonstrated that it holds common law and registered trademark rights in the TOEGRIPS Mark under Policy ¶ 4(a)(i). Further, the Panel finds that the disputed domain name is confusingly similar to the TOEGRIPS Mark. Second, the Panel finds that the evidence supports Respondent’s contention that it has both rights and legitimate interests in the <dogtoegrips.com> disputed domain name. Third, as Respondent prevailed on the second element, the Panel need not address the remaining element of the Policy – whether the Respondent acted in bad faith in registering and using 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The first question is whether Complainant has rights in the TOEGRIPS Mark. Complainant asserts rights in the TOEGRIPS Mark based upon its registration with the USPTO (e.g., Reg. No. 6,072,525 registered June 9, 2020). Registration of a mark with the USPTO demonstrates that the owner has enforceable rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018). In addition, Complainant claims it holds common law rights in the TOEGRIPS Mark because it has used it continuously since 2012.
Policy ¶ 4(a)(i) does not require a complainant to own a registered trademark prior to a respondent’s registration of a domain name if it can demonstrate common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). Such rights involve proving that the mark has acquired secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017). Here, the Panel finds that Complainant has shown that it holds common law and registered trademark rights in the TOEGRIPS Mark under Policy ¶ 4(a)(i).
The second question is whether the disputed domain name is identical or confusingly similar to Complainant’s TOEGRIPS Mark. The Panel finds that the disputed domain name is confusingly similar to the TOEGRIPS Mark as Respondent merely adds the descriptive term “dog” and the “.com” generic Top-Level Domain (“gTLD”) to the entirety of Complainant’s TOEGRIPS Mark. Adding a descriptive term and a gTLD to a complainant’s mark does not distinguish a domain name from the mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Rights or Legitimate Interests
The Panel finds that Respondent has rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent then carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), 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”).
In this case, the Panel finds that Complainant did not sufficiently carry its burden to make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel further finds that Respondent did carry its burden to come forward with evidence of its rights and legitimate interests in the disputed domain name. 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)).
The Panel agrees with Respondent that it offers its products for a legitimate and fair use per Policy ¶¶ 4(c)(i) and (iii) and that the disputed domain name is used in relation to a legitimate business that offers similar goods. The operation of a bona fide business in connection with a disputed domain name, as here, may be used as evidence of rights or legitimate interests in a disputed domain name. See Modern Props, Inc. v. Wallis, FA 152458 (Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name). It does not matter that the businesses compete with each other when the disputed domain name is comprised of generic terms over which Complainant does not have a monopoly.
Nor does the record reflect any proof that Respondent sought to infringe upon, or imply a connection with, the trademark rights of Complainant. There is no allegation or evidence that Respondent solicited Complainant’s customers or otherwise used tactics to undermine Complainant’s business. Accordingly, the Panel finds that Complainant’s allegation that Respondent lacks rights or legitimate interests has not been established.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
Registration and Use in Bad Faith
Given that the Panel finds that the Complainant has failed to establish Respondent’s lack of rights or legitimate interests in the disputed domain name, it shall not address the remaining element of the Policy as the issue is moot. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, WIPO Case No. D2004-0824 (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 Vanguard Group Inc. v. Investors Fast Track, FA0612000863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
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 <dogtoegrips.com> disputed domain name REMAIN WITH Respondent.
Lynda M. Braun, Panelist
Dated: June 15, 2021
