Gas, fart and monkeys : #UDRP against FartMonkeyGarage .com by #Discovery channel associates

A production company that’s the focus of the Discovery Channel series Fast N’ Loud, claimed rights to the GAS MONKEY GARAGE mark, and filed a UDRP.

The domain under flatulent fire: FartMonkeyGarage.com. Its owners created it to display humorous content and to sell t-shirts.

From the case’s particulars it’s evident that the Respondent was aware of the show, even referencing the car facility’s owner, Richard, in their t-shirt products. However, in a disclaimer added on the FartMonkeyGarage.com the Respondent claims they recently became aware of the other party, that operate from GasMonkeyGarage.com.

The National Arbitration Forum panelist found no similarities between the mark and the domain:

“In particular, this case does not involve a domain name comprising a trademark together with a pejorative term.  The trademark has not been taken, only the words “monkey” and “garage”.  Even if the Panel were to accept that here the word “fart” is used pejoratively (which it does not), there remains an open question as to whether the expression “monkey garage” is, adopting the words from The Royal Edinburgh Military Tattoo Ltd. v. Identity Protection Service, et al, case, a confusingly similar approximation of the trademark. […] Here, Respondent submits that the words “monkey” and “garage” are either commonplace or descriptive and the word “fart” is altogether different from “gas” and so distinguishes the domain name from the trademark.  The contrary argument posited by Complainant is that “gas” is an expression used to describe flatulence and that the word “fart” is a coarse expression with the same meaning.”

Final decision: let the Respondent keep the domain, along with its monkey farts, in the same garage.

Full details follow:

Gas Monkey Holdings, LLC v. Tony Anastasia

Claim Number: FA1905001844555

PARTIES

Complainant is Gas Monkey Holdings, LLC (“Complainant”), California, US. Respondent is Tony Anastasia (“Respondent”), US.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fartmonkeygarage.com>, registered with GoDaddy.com, 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.

Debrett G. Lyons as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 22, 2019; the Forum received payment on May 22, 2019.

On May 23, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <fartmonkeygarage.com> 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 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@fartmonkeygarage.com. Also on May 24, 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 June 2, 2019.

On June 6, 2019, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in GAS MONKEY GARAGE and alleges that the disputed domain name is confusingly similar to its trademark.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent broadly denies those allegations and submits, amongst other things, that the disputed domain name is not confusingly similar to the trademark.

FINDINGS

The only factual findings pertinent to the decision in this case are that:

1. Complainant operates an automobile creation facility under the name GAS MONKEY GARAGE which has been the focus of the televised Discovery Channel series, “Fast N’ Loud”; and

2. Complainant is the owner of United States Patent & Trademark Office (“USPTO”) Reg. No. 4,796,954, registered August 18, 2015 for the trademark GAS MONKEY GARAGE.

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 and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO trademark registration for GAS MONKEY GARAGE, the Panel is satisfied that it has trademark rights (see, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)).

On the issue of confusingly similarity, the Complainant’s submissions are that:

The Disputed Domain Name … is confusingly similar to Complainant’s Marks because the domain name incorporates Complainant’s [trademark]. Panels have found domain names are identical or confusingly similar to a trademark “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” The Royal Edinburgh Military Tattoo Ltd. v. Identity Protection Service, et al, WIPO Case No. D2016-2290 (finding the edinburghmilitarytattootickets.com to be confusingly similar to complainant’s mark “Royal Edinburgh Military Tattoo”). Here, the Disputed Domain Name is confusingly similar to Complainant’s [trademark] because the domain name incorporates the main elements of Complainant’s [trademark].

Although the Disputed Domain Name replaces the initial word “GAS” with the colloquial synonym “FART,” Panels have recognized that domain names identical or confusingly similar to complainant’s marks used with a pejorative term do not impact a finding of confusing similarity. Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647 (finding for purposes of the first prong of the Policy, <sermosucks.com> was confusingly similar to SERMO trademark); Society Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168. WIPO itself recognizes that “[a] domain name consisting of a trademark and a pejorative term … is considered confusingly similar to the complainant’s trademark for the purpose of satisfying standing under the first element.”). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Decision Overview”), Paragraph 1.13.3.

…

The existence of the “.com” generic top-level domain (“gTLD”) added to the Disputed Domain Name is of no moment. Panels routinely disregard gTLDs in determining whether a disputed domain name is identical or confusingly similar.

For its part, Respondent submits that:

The name was chosen as a humorous name for my business plan. I believe that complainants “gas” from gas monkey garage is in reference to fuel used in a vehicle and “fart” from fart monkey garage is in reference to flatulence which I thought would be a cute way to attract investors.

Fart Monkey Garage is not a business and I have not registered any business in that name fartmonkeygarage .com is simply a business plan for a car storage facility in Buffalo, New York

….

The key words monkey, a common animal, and garage, deemed as car storage. The complainant cannot own the words monkey and garage…

The Panel is in agreement that the non-distinctive gTLD, “.com.” can be disregarded for the purposes of comparison (see, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000); Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007)).

As to Respondent’s submissions, the Panel will turn shortly to consider the suggestion that “monkey” and “garage” are commonplace or descriptive words and make its assessment of the way in which the words “gas” and “fart” would be read when used in combination with those words.

Something more needs to be said of Complainant’s submissions because, whilst in their generality they restate the consensus opinion of UDRP panellists on certain principles, those points of agreement and the cited authorities on which Complainant relies are inapt to the comparison to be made by the Panel in this case.

In particular, this case does not involve a domain name comprising a trademark together with a pejorative term. The trademark has not been taken, only the words “monkey” and “garage”. Even if the Panel were to accept that here the word “fart” is used pejoratively (which it does not), there remains an open question as to whether the expression “monkey garage” is, adopting the words from The Royal Edinburgh Military Tattoo Ltd. v. Identity Protection Service, et al, case, a confusingly similar approximation of the trademark. That question need not be considered because the Panel finds that the proper assessment involves comparison of the two expressions as wholes, a very familiar test in trademark law. In so doing greater weight might be placed on the essential feature(s) of the trademark if those features have been incorporated into the comparison expression. Here, Respondent submits that the words “monkey” and “garage” are either commonplace or descriptive and the word “fart” is altogether different from “gas” and so distinguishes the domain name from the trademark. The contrary argument posited by Complainant is that “gas” is an expression used to describe flatulence and that the word “fart” is a coarse expression with the same meaning.

The Panel observes that the compared terms are neither visually nor aurally similar. The Complainant’s submission is that the terms are conceptual similar but the Panel does not find the submission compelling. Within context, the Panel finds another reading of the trademark more obvious. The expression “grease monkey” is an old and well-known slang term for a mechanic. That expression is called to mind by inclusion of the generic word “garage” in the trademark. With that in mind and taking account of Complainant’s use of the trademark, the Panel finds that the word “gas” in the trademark would be understood in its colloquial sense, meaning engine fuel. The Panel finds it most unlikely, taken as part of the trademark as a whole, that the word “gas” would be seen by a significant part of the public as a reference to flatulence. To the extent that the trademark is possessed of a distinctive or essential feature, the Panel would identify that to be the expression “gas monkey” since it is a play on the known expression, “grease monkey”. The disputed domain name does not take all of the trademark or indeed this essential part of the trademark and the Panel finds that it is not confusingly similar to the trademark.

The Panel so finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

No findings required (see, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, failure to prove one of the elements makes further inquiry into the remaining element unnecessary; Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i).

Registration and Use in Bad Faith

No findings required.

DECISION

Having not established one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <fartmonkeygarage.com> domain name REMAIN WITH Respondent.

Debrett G. Lyons, Panelist

Dated: June 12, 2019

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