Drywater.com: Aged domain wins UDRP over mark’s dubious rights

The domain name Drywater.com was registered in 1996. DryWater Inc. filed a UDRP claiming prior rights to the domain name, based on a trademark registered in 2021.

The panelist pointed out that the DRYWATER mark claimed by the Complainant appears to be registered to someone else:

“The trademark that is in Annex 5 is not, as far as the evidence goes, a trademark “in which the complainant has rights”. It is registered in the name of Mr. Appio and there is no suggestion, let alone evidence, that he leases the trademark to the company or that it has been assigned to the company or that the company has been given some right in the trademark by the individual or the right to bring this proceeding.”

Furthermore, the Panelist noted that the time lapse between the domain’s registration and that of the claimed mark is 24 years:

“The second problem with the trademark relied on is that it carries the endorsement that, as the Panel reads it, the trademark had a “FIRST USE: 20200801. FIRST USE IN COMMERCE: 20200801” endorsement on it, being in both cases as the Panel understands it, August 1, 2020. That date, of course, is more than 24 years after the disputed domain name was registered. Thus, there was no registered trademark in the way of anyone registering the domain name on February 2, 1996.”

Final decision: Deny transfer of the domain name Drywater.com to the Complainant.

Note: This article erroneously noted that the UDRP was filed against the domain Driwater.com. It has now been corrected; we regret the error.

The domain transfer was denied.

DryWater Inc. v. DriWater

Claim Number: FA2206001999206

PARTIES

Complainant is DryWater Inc. (“Complainant”), represented by Roy D. Gross of The Roy Gross Law Firm, LLC, Connecticut, USA. Respondent is DriWater (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <drywater.com>, registered with Network Solutions, 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.

The Honorable Neil Anthony Brown QC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 6, 2022; the Forum received payment on June 6, 2022.

On June 6, 2022, Network Solutions, LLC confirmed by e-mail to the Forum that the <drywater.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 June 8, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2022 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@drywater.com. Also on June 8, 2022, 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.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On July 4, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant made the following contentions.

Complainant is a California-based company specializing in manufacturing energy drinks, powders, and nutritional supplement sports drinks. Complainant claims registered trademark rights in the DRYWATER mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,415,493, registered July 13, 2021). See Compl. Annex 5. Complainant also claims common law trademark rights in the DRYWATER mark through alleged extensive use of the mark. The disputed domain name <drywater.com> is identical to the DRYWATER trademark because it wholly incorporates Complainant’s DRYWATER mark differing only through the addition of the “.com” generic top-level domain (“gTLD”) to the trademark.

Respondent lacks rights or legitimate interests in the <drywater.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the DRYWATER mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent does not make active use of the disputed domain.

Respondent registered and uses the domain in bad faith. Respondent had actual or constructive knowledge of Complainant’s rights in the DRYWATER mark at the time they registered the disputed domain name.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

1. Complainant is a California-based company specializing in manufacturing energy drinks, powders, and nutritional supplement sports drinks.

2. Complainant has not established any trademark rights in the DRYWATER mark in which it has rights either through registration of the alleged trademark with a competent authority or at common law.

3. The Panel refrains from making any further findings of fact.

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.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely.

For this purpose, Complainant submits that it has registered trademark rights in two trademarks registered with the USPTO. The first trademark is a registration of the DRYWATER mark namely Reg. No. 6,415,493, registered on July 13, 2021. See Compl. Annex 5. Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). There are, however, two problems with Complainant relying on that alleged trademark.

The first problem is whether this is a trademark of the Complainant at all or even if it has any rights in the trademark. Annex 5 shows that the registered owner of the trademark is not the Complainant but “Appio, Bryan INDIVIDUAL UNITED STATES 303 Magnet Irvine CALIFORNIA 9261”. Presumably, Mr.Bryan Appio is connected in some way with the company and, indeed, this is made reasonably clear in the Complaint itself. The Complaint gives the contact for the Complainant as “Names: Dry Water Inc., Address:303 Magnet Street, Irvine, CA 92618 UNITED STATES,Telephone:+1 (631) 871 4680, E-Mail:bryan@drywater.co.” It may be that Mr. Appio has registered the trademark on behalf of the company, but no reference to this is made in the Complainant’s evidence or to whether he has assigned or leased the trademark to the company or given it some sort of authority to bring this proceedings and the extent of that authority.

This is not merely a technical or minor issue but is an issue of substance as it goes to whether the Complainant can bring this claim at all, or whether it will have to take proceedings in a court and prove its case that way. The Complainant must show in this proceeding that it has standing to bring the Complaint, which means whether it can compel the registrant of the domain name, i.e. the Respondent, to take part in the compulsory administrative or quasi-arbitration process known as the UDRP. That requires proof that the Complainant who is seeking the domain name has a trademark “in which the complainant has rights” as the UDRP is available only to trademark owners and others with rights in a trademark. The trademark that is in Annex 5 is not, as far as the evidence goes, a trademark “in which the complainant has rights”. It is registered in the name of Mr. Appio and there is no suggestion, let alone evidence, that he leases the trademark to the company or that it has been assigned to the company or that the company has been given some right in the trademark by the individual or the right to bring this proceeding.

The second problem with the trademark relied on is that it carries the endorsement that, as the Panel reads it, the trademark had a “FIRST USE: 20200801. FIRST USE IN COMMERCE: 20200801” endorsement on it, being in both cases as the Panel understands it, August 1, 2020. That date, of course, is more than 24 years after the disputed domain name was registered. Thus, there was no registered trademark in the way of anyone registering the domain name on February 2, 1996.

This would have obvious implications if the Panel came to consider whether Respondent has a right or legitimate interest in the domain name and whether it did, or even could have, registered the domain name in bad faith on February 2, 1996, when there was no trademark to which such bad faith intentions could have been directed.

But as things stand at the present, the Complainant has not shown that it, not somebody else, has a trademark to which the domain name is identical or confusingly similar.

The second trademark relied on is also contained in Annex 5 to the Complaint. That is Registration Number 6415494 also for DRYWATER, and also registered in the name of “Apio, Bryan INDIVIDUAL UNITED STATES 303 Magnet Irvine CALIFORNIA 92618” and also registered on July 13, 2021. The same problems therefore arise with respect to this, the second trademark as arise with respect to the first trademark. It is not a trademark “in which the complainant has rights”.

As well as the registered trademarks relied on, the Complainant submits that it relies on “Complainant’s common law rights in the DRYWATER trademark in relation to products and services in the field of energy drinks and powder…”.There is no evidence of those alleged common law rights, no evidence of how they arose or when and no evidence of whether it is the Complainant who has those alleged rights. Indeed, it would seem that, as the registered trademarks were registered in the name of an individual, any common law trademark rights would be owned by the same individual. But there is no evidence on any of these matters. The Panel therefore finds that Complainant has not shown that it has common law rights to the DRYWATER trademark.

The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant’s mark. On the evidence to date, the Panel has to decide this question in the negative, as there is no trademark in which the Complainant has rights to which the domain name could be identical or confusingly similar.

Moreover, it is difficult if not impossible for the Panel to say anything about whether the disputed domain name is identical or confusingly similar to a trademark when there seems to be doubt or at least confusion as to what is the domain name in question. The disputed domain name is stated in the Complaint to be <drywater.com> and that is the domain name the registrar has verified in its verification. But the Complaint goes on to say “Here, Respondent has adopted, in its entirety, the DRYWATER trademark in the domain name and merely added a generic and non-distinctive term “groups.”” ( emphasis added). The Panel does not understand how that statement can be made and it adds confusion to the nature of the claim on which the Panel is being asked to pass judgement and in particular whether a domain name is identical or confusingly similar to a trademark and why that is so.

The Complainant has therefore not been able to establish the first of the three elements that it must prove.

Rights or Legitimate Interests and Registration and Use in Bad Faith

As the Complainant has not been able to establish the first element and as a complainant is obliged to establish all three elements under the UDRP, the Panel will not proceed further in this proceeding as it is unnecessary to do so. Moreover, the Panel must ensure that it does not make comments that might in any way effect any subsequent proceedings and it expressly refrains from doing so.

 

The Complainant will therefore be denied.

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 <drywater.com> domain name REMAIN WITH Respondent.

The Honorable Neil Anthony Brown QC

Panelist

Dated: July 6, 2022

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