A trademark alone does not secure domain rights, and in the case of EquityTrustCompany.com, the UDRP Complainant experienced just that.
Equity Trust Company, is a South Dakota corporation that administers retirement plans. According to the UDRP, the Complainant has rights in the EQUITY TRUST COMPANY mark based on registration of the mark with the United States Patent and Trademark Office.
That mark, however, was registered in 2010 all while the domain was registered in 2005. That five year seniority compelled the Forum (NAF) panelist to deliver a decision favoring the Respondent.
Final decision: Deny transfer of the domain EquityTrustCompany.com to the Complainant.
The domain transfer was denied.
Equity Trust Company v. Domain Vault / Domain Vault LLC
Claim Number: FA2112001976315
PARTIES
Complainant is Equity Trust Company (“Complainant”), represented by Michael A. Marrero of Ulmer & Berne, LLP, Ohio, USA. Respondent is Domain Vault / Domain Vault LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with Name.com, 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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on December 7, 2021. The Forum received payment on December 7, 2021.
On December 9, 2021, Name.com, Inc. confirmed by e-mail to the Forum that the domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 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@equitytrustcompany.com. Also on December 15, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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, Equity Trust Company, is a South Dakota corporation that administers retirement plans. Complainant has rights in the EQUITY TRUST COMPANY mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s domain name is confusingly similar to Complainant’s mark.
Respondent lacks rights and legitimate interests in the domain name. Respondent is not commonly known by the domain name, nor has Complainant licensed or authorized Respondent to use the EQUITY TRUST COMPANY mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent uses the domain name for competing purposes.
Respondent registered and uses the domain name in bad faith because Respondent is exploiting Complainant’s EQUITY TRUST COMPANY mark to direct business away from Complainant and lead visitors to Complainant’s competitors. Additionally, Respondent failed to respond to Complainant’s cease-and-desist letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has failed to establish all the elements entitling it to relief.
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
Complainant has shown that it has rights in the EQUITY TRUST COMPANY mark based on two registrations of the mark with the USPTO, the earlier of which being Reg. No. 3,792,486, registered May 25, 2010, upon application made July 30, 2009, with a claimed date of first use in commerce of 31 May 2003.
The Panel finds Respondent’s domain name to be identical to Complainant’s mark since it comprises Complainant’s mark in its entirety, together with the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
Given the Panel’s finding in relation to the third element, it is unnecessary to address this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The domain name was registered on June 2, 2005, almost 5 years before the registration on May 25, 2010 of Complainant’s earliest EQUITY TRUST COMPANY mark. The application for registration of that mark made on July 30, 2009 claimed first use of the mark in commerce on May 31, 2003, some two years before Respondent registered the domain name. However, as was held in Franki Global Inc. v. Privacy service provided by Withheld for Privacy ehf / Golden Dream, The Stay Gold Co / Samantha Jurashka, WIPO Case No. D2021-2901 (December 13, 2021):
“… the date of first use in commerce claimed on a trademark application is of limited evidentiary value in administrative proceedings brought under the Policy. For the purposes of the present proceeding, this date amounts to a mere assertion which would still require to be suitably evidenced. Absent additional supporting evidence, which is lacking on the present record, the Panel is not prepared to find that the Complainant had unregistered trademark rights in a relevant trademark at the material time.”
The domain name resolves to a website with links to direct competitors of Complainant offering similar financial services. This is bad faith use of the kind identified in Policy ¶ 4(b)(iv) and, as such, is evidence of bad faith registration. However, such evidence is not necessarily conclusive, since it may be weighed against any evidence of good faith registration. See Passion Group Inc. v. Usearch, Inc. (eResolution case AF-0250) [jobpostings.com], followed in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava (WIPO case D2000-0905) [animerica.com]:
“The panel is assisted in forming a view as to how to interpret paragraphs 4(a)(iii) and 4(b)(iv) by the contrast between the introductory words of paragraph 4(c): “any of the following circumstances …shall demonstrate your rights or legitimate interests” and the introductory words of paragraph 4(b): “the following circumstances…shall be evidence of the registration and use of a domain name in bad faith”.
This contrasting language indicates that use of the kind described in 4(b)(iv) is to be taken as evidence of bad faith registration as well as evidence of bad faith use. But this evidence is not necessarily conclusive. Furthermore, the panel is not required to assign substantial weight to evidence of constructive bad faith registration furnished by paragraph 4(b)(iv), and the panel may have regard to other evidence in determining whether the requirements of 4(a)(iii) have been proved.
This approach accords with the Policy by enabling a finding of bad faith registration to be made where bad faith use within 4(b)(iv) is the only evidence tending to show the purpose for which the domain name was registered. Where, however, there is other relevant evidence, such as evidence that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration constituted by evidence of bad faith use within 4(b)(iv). It is difficult to imagine circumstances in which, under this approach, subsequent bad faith use within 4(b)(iv) would suffice to prove that a domain name was originally registered in bad faith”.
See also Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085.
Complainant has provided no evidence that it had acquired unregistered trademark rights prior to Respondent’s registration of the domain name. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Jurisprudential Overview 3.0”), Section 3.8, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. In certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
There is no evidence before the Panel that Respondent had any such intent.
Complainant contends that Respondent’s failure to respond to Complainant’s cease-and-desist letter dated November 24, 3021 indicates bad faith use and registration of the domain name, citing Kellogg North America Company v. Frank Unger, FA1613262 (Forum June 1, 2015); Encyclopedia Britannica v. Zuccarini, D2000-0330 (WIPO June 7, 2000) and RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001. In each of those cases the domain name was registered long after the trademark so the respondent had the trademark in mind when registering the domain name. There is no such evidence here.
Accordingly, the Panel is not satisfied that the domain name was registered in bad faith.
Complainant has failed to establish this element.
DECISION
Complainant 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 domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: January 10, 2022
