BODIS

#Domain registered in 1999 escapes #UDRP slaughter

UDRP has been denied.

The domain boulderdesigns.com was registered in 1999, and Mogavero Investments, LLC of Waco, Texas, filed a UDRP against it.

The Complainant’s mark for BOULDER DESIGNS dates back to 2006. There was no response by the Respondent, that apparently abandoned a similar trademark application in 2011.

Christopher J. Pibus, sole panelist at the WIPO, noted that the domain was registered “at least 5 years” before the Complainant’s mark, and thus found no indication of bad faith in its registration.

BoulderDesigns.com was ordered to remain with the Respondent.

Full details of this decision follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mogavero Investments, LLC v. James C. Clements
Case No. D2018-0728

1. The Parties

The Complainant is Mogavero Investments, LLC of Waco, Texas, United States (“United States” or “U.S.A.”), represented by Shelton Law & Associates, LLC, United States.

The Respondent is James C. Clements, of Yukon Territory, Zimbabwe.

2. The Domain Name and Registrar

The disputed domain name <boulderdesigns.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 March 29, 2018. On April 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on April 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2018.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 31, 2018. The Panel finds that it was properly constituted. 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.

4. Factual Background

The Complainant creates custom manufactured boulders and concrete monuments for landscaping purposes in residential and commercial locations.

The Complainant currently owns several trademark applications and registrations in the U.S.A. for BOULDER DESIGNS, dating back to October 10, 2006.

The Complainant also owns and operates a website at “www.boulderdesigns.net”.

The disputed domain name <boulderdesigns.com> was registered on December 3, 1999. At the time the Complaint was filed, the disputed domain name reverted to a parking page.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <boulderdesigns.com> is identical to the Complainant’s trademark. The disputed domain name contains the dominant elements of the Complainant’s trademark, and the addition of “.com” does not serve to distinguish the disputed domain name from the Complainant’s registered trademark.

The Complainant contends that it holds “numerous” United States federal trademark registrations for BOULDER DESIGNS and that it “received its first trademark registration in the U.S.A. based on an application filed as early as April 18, 1996.” The Complainant claims its trademarks are famous, and that it “obtained these registrations long before the recent registration by [the] Respondent” of the disputed domain name. The Complainant also relies on registrations of BOULDER DESIGNS in Canada to claim reputation in the brand among the “relevant” public in the U.S. and worldwide.

The Complainant also claims the Respondent “was, or should have been, aware of Mogavero’s registered and common law trademarks and company name when it registered” the disputed domain name. The Complainant’s “numerous registrations for the BOULDER DESIGNS mark provided [the] Respondent with constructive notice.”

Further, the Complainant contends that the Respondent has not used the disputed domain name in association with any bona fide offering of goods and services. In fact, the disputed domain name has reverted to a parking page and has therefore been passively held since its registration.

The Complainant contends that the Respondent has registered the disputed domain name in bad faith, because it had knowledge of the Complainant’s rights in the trademark BOULDER DESIGNS and has passively held the disputed domain name <boulderdesigns.com> to interfere with the business of the Complainant, and potential for monetary gain by targeting the Complainant for resale. In particular, the Complainant points to the fact that the Respondent abandoned a trademark application he filed for BOULDER DESIGNS on May 9, 2011, arguing that “this undoubtedly suggests that it had constructive notice of Mogavero’s trademark registrations, filed as early as 1999.”

B. Respondent

The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have registered trademark rights in the mark BOULDER DESIGNS by virtue of its trademark registrations noted in paragraph 4 above.

The Panel finds that the disputed domain name <boulderdesigns.com> is confusingly similar to the Complainant’s registered trademark BOULDER DESIGNS, as the domain name replicates the entirety of the Complainant’s registered mark. The addition of the generic Top-Level Domain “.com” does not change the analysis of confusing similarity.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In view of the finding under Bad Faith, the Panel will not consider the issue of rights or legitimate interests.

C. Registered and Used in Bad Faith

With respect to bad faith, the Complainant focuses its arguments on the Respondent’s filing of a trademark application for BOULDER DESIGNS in the U.S.A. on May 9, 2011, which was subsequently abandoned. According to the Complainant, this abandonment “undoubtedly suggests that it (sic) had constructive notice of Mogavero’s trademark registrations, filed as early as 1999”. This argument is unfounded. It appears that the Complainant failed to examine the United States Patent and Trademarks Office file for the application in question, as a review of the file history reveals that the Office issued an objection based on geographic descriptiveness, and did not raise the existence of any other registration as a bar. The Panel is particularly troubled by the misleading reference to “Mogavero’s trademark registrations, filed as early as 1999.” There was only one registration for BOULDER DESIGNS in existence as of 2011, and that registration was based on a filing that occurred in 2005, not in 1999.

The Complainant’s arguments are undermined by a number of errors of a similar nature, which consistently overstate the Complainant’s case. In attempting to establish the strength of the Complainant’s trademark portfolio, it refers to “numerous” BOULDER DESIGNS registrations, and claims it obtained its first trademark registration in the U.S.A. based on an application filed as early as April 1996. When the Panel reviewed the Complainant’s BOULDER DESIGNS registrations, it was clear that the earliest relevant application was in fact filed in 2005 with a claim of first use on February 16, 2005. Remarkably, it appears that the Complainant was attempting to rely on its application for the trademark BORDER MAGIC, which was in fact filed in April 1996, but which is entirely irrelevant to this proceeding. The chronology is important here because the disputed domain name was registered on December 3, 1999, which is long before the Complainant’s predecessor filed to protect BOULDER DESIGNS in 2005. The Complainant’s reference to what is in fact the BORDER MAGIC filing in 1996 created the impression that Complainant held relevant trademark rights prior to the registration of the disputed domain, which is not accurate.

As a final corrective note, the Complainant claims that it has an established reputation in its BOULDER DESIGNS trademark among “the relevant public in the U.S. and worldwide”. In support of this claim, the Complainant relies on “registrations” in Canada. In fact, the Complainant only holds two pending applications in Canada, filed in 2017 based on proposed use. It is a misrepresentation to claim “worldwide” reputation outside the U.S.A. founded on proposed use in a single country. In light of the total absence of evidence of actual sales and advertising by the Complainant in the U.S.A. or elsewhere, it is not possible for the Panel to recognize that the Complainant holds any meaningful reputation in its trademarks.

Having carefully reviewed the Complainant’s submissions, the Panel has not identified any convincing evidence or submissions which would support a finding of bad faith under the Policy, even in the absence of a response from the Respondent.

The actual chronology shows that the registration of the disputed domain name in 1999 preceded the first use of the Complainant’s relevant trademarks by at least 5 years. The disputed domain name could not therefore have been registered in bad faith.

Accordingly, the Panel finds that the Complainant has not satisfied the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Christopher J. Pibus
Sole Panelist
Date: June 15, 2018


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