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#Domainer loss : Mike Mann lost #UDRP for LeaderInMe.com #domain

ZFBot

A company that claimed rights to the mark THE LEADER IN ME managed to snatch LeaderInMe.com.

The UDRP was filed against DomainMarket.com, the domain portfolio outfit of popular serial entrepreneur, Mike Mann, who is asking for $39,888 dollars for the domain name.

While LeaderInMe.com was registered in 2009, both Respondent and Complainant seemed to refer to a 2008 registration date. What’s certain, is that the trademark was applied for in September 2008, but registration wasn’t granted until 2012.

The Respondent stated:

“Respondent has rights and legitimate interests in the <leaderinme.com> domain name. Respondent is a generic domain name reseller. Respondent did not register the <leaderinme.com> domain name in bad faith. Respondent registered the domain name because it is generic and not for the purpose of reselling it to Complainant. Moreover, the offered price cannot in and of itself establish bad faith. Additionally, Respondent does not feature or sell advertisements at the disputed domain name’s resolving website. Further, Respondent could not have known of Complainant’s rights in the THE LEADER IN ME mark prior to registering the disputed domain name because Respondent’s registration predates Complainant’s rights in the mark.”

The sole panelist at the National Arbitration Forum made an interesting point regarding the Respondent’s familiarity with the trademark:

” As indicated above, the effective date of a trademark is not the date of registration but the date of filing of the application and furthermore such application was made public for opposition before the date of registration of the domain name.  Therefore, the Panel concludes Respondent had could have knowledge of Complainant’s rights in the THE LEADER IN ME mark prior to registering the <leaderinme.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).”

Final decision: transfer of LeaderInMe.com from the Respondent to the Complainant should occur. However, such transfer has not completed as of today.

Full details of the decision follow.

Franklin Covey Co. v. Domain Administrator / DomainMarket.com

Claim Number: FA1812001822342

PARTIES

Complainant is Franklin Covey Co. (“Complainant”), represented by Michael Bettin of Franklin Covey Co., Utah, USA. Respondent is Domain Administrator / DomainMarket.com (“Respondent”), represented by Brian Leventhal of Brian H. Leventhal, Attorney at Law, P.C., Maryland, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <leaderinme.com>, registered with eNom, LLC.

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.

Jaime Delgado as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 21, 2018; the Forum received payment on December 21, 2018.

On December 28, 2018, eNom, LLC confirmed by e-mail to the Forum that the <leaderinme.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 January 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 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@leaderinme.com. Also, on January 7, 2019, 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 31, 2019.

On February 4, 2019 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jaime Delgado 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, Franklin Covey Co., uses the LEADER IN ME in connection with its time management and organizational products and services. Complainant has rights in the THE LEADER IN ME mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,194,110, priority date Sept. 2, 2008). See Compl. Annex 2. Respondent’s <leaderinme.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the THE LEADER IN ME mark in the domain name and adds a “.com” generic top-level domain (“gTLD”).

Respondent lacks rights and legitimate interests in the <leaderinme.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent offers the domain name for sale.

Respondent registered and uses the <leaderinme.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name’s website where it offers the domain name for sale. Further, Respondent had actual knowledge and constructive notice of Complainant’s rights in the THE LEADER IN ME mark prior to registering the disputed domain name.

B. Respondent

Respondent has rights and legitimate interests in the <leaderinme.com> domain name. Respondent is a generic domain name reseller.

Respondent did not register the <leaderinme.com> domain name in bad faith. Respondent registered the domain name because it is generic and not for the purpose of reselling it to Complainant. Moreover, the offered price cannot in and of itself establish bad faith. Additionally, Respondent does not feature or sell advertisements at the disputed domain name’s resolving website. Further, Respondent could not have known of Complainant’s rights in the THE LEADER IN ME mark prior to registering the disputed domain name because Respondent’s registration predates Complainant’s rights in the mark.

FINDINGS

Complainant has rights in the THE LEADER IN ME mark based upon its registration of the mark with the USPTO with a filing date of March 11, 2008.

Respondent is the owner for the disputed domain name <leaderinme.com>.

The Panel notes that both parties assert the <leaderinme.com> domain name was registered on February 20, 2008; however, the WHOIS information for the disputed domain name lists the registration date as May 25, 2009.

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 or Confusingly Similar: Policy ¶ 4(a)(i).

Complainant has rights in the THE LEADER IN ME mark based upon its registration of the mark with the USPTO. Registration with the USPTO generally establishes a complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides a list of its USPTO registrations for the THE LEADER IN ME mark (e.g., Reg. No. 4,194,110, priority date Sept. 2, 2008). See Compl. Annex 2. The Panel notes Complainant does not provide its trademark registrations for the THE LEADER IN ME mark, rather it provides a TESS search listing the marks along with purported priority dates for its marks in the Complainant. Id. A TESS search of Complainant’s mark reveals that it was registered on January 3, 2012, after Respondent’s registration of the disputed domain name but the relevant date of rights in a mark is determined at the time of its application. See Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum Apr. 9, 2018) (“The relevant date for acquiring rights in a registered mark is the application filing date.”). The Panel notes the filing date of application for Complainant’s earliest known trademark registration for the THE LEADER IN ME mark was on March 11, 2008. Therefore, the Panel determines Complainant has sufficiently established its rights in the THE LEADER IN ME mark under Policy ¶ 4(a)(i).

Next, Complainant argues that Respondent’s <leaderinme.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the THE LEADER IN ME mark in the domain name and adds a gTLD. Additionally, though Complainant does not specifically address this, the Panel notes that Respondent removes the word “the” from the mark before incorporating it into the domain name. Such changes are typically insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.). Here, Respondent includes the THE LEADER IN ME mark in the domain name, removes the word “the,” and adds a “.com” gTLD. Therefore, the Panel concludes that Respondent’s <leaderinme.com> domain name is confusingly similar to Complainant’s THE LEADER IN ME mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests: Policy ¶ 4(a)(ii).

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) (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 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 argues that Respondent lacks rights and legitimate interests in the <leaderinme.com> domain name because Respondent is not authorized or permitted to use Complainant’s THE LEADER IN ME mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (“ Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes the WHOIS of record identifies Respondent as “Domain Administrator / DomainMarket.com,” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain. Respondent argues that Complainant failed to present evidence that Complainant’s mark was known to the general public and there is not enough evidence to support that Respondent was probably aware of Complainant’s rights. The documents on record show that the Trademark was published for opposition on August 5, 2008 so it is quite possible that Respondent was aware of Complainant’s mark. Respondent argues further that the disputed domain name was registered on February 20, 2008 but that date is incorrect. The domain name was registered on May 25, 2009. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the <leaderinme.com> domain name under Policy ¶ 4(c)(ii).

Next, Complainant argues that Respondent fails to use the <leaderinme.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent diverts users to a website where Respondent offers the domain name for sale. Use of a disputed domain name to offer it to sale to the general public may not be considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Here, Complainant claims that the disputed domain name resolves to a webpage where Respondent attempts to sell the domain name for $39,888.00. See Compl. Annexes 6 and 7. Therefore, the Panel concludes that Respondent fails to use the <leaderinme.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

Complainant argues that Respondent registered and uses the <leaderinme.com> domain name in bad faith because Respondent offers the domain name for sale. Registering a domain name with the intent to sell it for profit may evince bad faith under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Complainant provides screenshots of the disputed domain name’s resolving webpage, where Respondent offers the domain name for sale. See Compl. Annexes 6 and 7. Therefore, the Panel may conclude that Respondent uses the <leaderinme.com> domain name in bad faith under Policy ¶ 4(b)(i).

Next, Complainant argues that Respondent registered and uses the <leaderinme.com> domain name in bad faith because Respondent attempts to attract users to the disputed domain name’s resolving webpage for commercial gain. Use of a disputed domain name to confuse users looking for a complainant into visiting a respondent’s website may evince bad faith under Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain). Complainant claims that Respondent uses the disputed domain name to sell advertisements and divert users to third-party websites. See Compl. Annex 6. Therefore, the Panel concludes that Respondent uses the <leaderinme.com> domain name in bad faith under Policy ¶ 4(b)(iv).

Next, Complainant argues that Respondent had actual knowledge and constructive notice of Complainant’s rights in the THE LEADER IN ME mark prior to registering the <leaderinme.com> domain name. Though constructive notice of a complainant’s rights in a mark is insufficient to support a finding of bad faith under Policy ¶ 4(a)(iii), actual knowledge may be sufficient and can be inferred from evidence of the fame of the mark and the respondent’s use of it. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant claims that its mark is famous, but does not provide evidence to support this contention. As to Respondent’s use, Complainant cites language at the disputed domain name’s resolving webpage that Complainant asserts is directed toward the true owner of the mark incorporated in the domain name. See Compl. Annexes 6 and 7. Respondent argues that Respondent registered the domain name well prior to Complainant’s first use thus it would have been impossible to have acquired fame or distinctiveness prior to the registration of the domain name. Respondent further argues that Complainant’s claim that Respondent had constructive notice is invalid because the registration of the trademark did not issue until four years after Respondent registered the domain name. As indicated above, the effective date of a trademark is not the date of registration but the date of filing of the application and furthermore such application was made public for opposition before the date of registration of the domain name. Therefore, the Panel concludes Respondent had could have knowledge of Complainant’s rights in the THE LEADER IN ME mark prior to registering the <leaderinme.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <leaderinme.com> domain name be TRANSFERRED from Respondent to Complainant.

Jaime Delgado Panelist

Dated: February 14, 2019


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