TL Software Inc., operating from the domain GovWellTech.com, filed a UDRP to get the domain GovWell.com. They noted that their GOVWELL mark is good enough against the Respondent’s mark GOV WELL (added space) despite pending registration with the USPTO still.
Not so fast, said the Forum Panelist:
However, as stated above and according to the evidence provided by the Complainant itself, cross-checked with the USPTO live database, the trademark relied upon by the Complainant is currently not registered. The rights in a pending US trademark are quite limited, in that they do not match the extensive enforcement rights conferred by a federal trademark registration, until such trademark is actually registered. […] Consequently, the Complainant cannot demonstrate any registered trademark rights on “GOVWELL”.
Final decision: Deny the transfer of the domain GovWell.com to the Complainant. The Panelist denied the Respondent’s request for a finding of Reverse Domain Name Hijacking.
The domain transfer was denied.
TL Software Inc. v. Randy Roberts
Claim Number: FA2312002075183
PARTIES
Complainant is TL Software Inc. (“Complainant”), represented by Jason Houda of Patent Grid LLP, New York, USA. Respondent is Randy Roberts (“Respondent”), represented by Justin Clark of J. Clark Law Firm, PLLC, Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is govwell.com, registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Sozos-Christos Theodoulou as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on December 13, 2023; Forum received payment on December 13, 2023.
On December 14, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the govwell.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 December 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 2024 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@govwell.com. Also on December 21, 2023, 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 16, 2024.
On January 18, 2024, pursuant to the Parties’ requests to have the dispute decided by a single-member Panel, Forum appointed Sozos-Christos Theodoulou as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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
The Complainant contends that the Disputed Domain Name is confusingly similar to its GOVWELL service mark, as it fully incorporates this mark. Further, the Complainant essentially argues that the Respondent lacks rights or legitimate interest in the Disputed Domain Name because “Respondent has not used the domain since at least 2013” and has not made “either commercial or non-commercial fair use” of it. On bad faith, the Complainant suggests that the Respondent is clearly cybersquatting several similar domains, with the sole aim to eventually “extract an exorbitant profit from startup businesses”.
B. Respondent
The Respondent argues that Complainant has failed to demonstrate it has trademark rights on “GOVWELL”, as its US invoked trademark application is still pending, while it has not established unregistered or common law rights, either. Further, the Respondent alleges that it has prior trademark rights on “GOV WELL”, based on its use since 2015, i.e. 8 years before the Complainant’s trademark application. Then, the Respondent claims legitimate interest on the domain at issue, explaining at length its own multiple activities and actions in using “GOV WELL”. Lastly, the Respondent argues in favour of its good faith in registering and holding various domain names for “GOV WELL”, and emphasizes among others that it has not offered for sale the said domains, thus showing that the Complainant’s claim of the Respondent’s bad faith is unsustainable. The Respondent also calls upon the Panel to find that the Complainant has engaged in reverse domain name hijacking.
FINDINGS
The Complaint/Amended Complaint has not been filed in a way that would enable the Panel to learn sufficient facts for deciding on this case. The Panel has, thus, attempted to make its own additional research, so as to better apprehend the basic elements of the dispute.
The Disputed Domain Name govwell.com was registered on March 17, 2015 by the Respondent (as confirmed by the Registrar).
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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
Complainant asserts rights in the GOVWELL mark based upon a pending trademark application with the USPTO (see US Serial No. 97814600, applied for on March 2, 2023).
Further, Complainant contends that Respondent’s govwell.com domain name is identical or confusingly similar to Complainant’s GOVWELL mark. The addition of a gTLD to a mark does not distinguish the disputed domain name from the mark incorporated therein, and is usually considered irrelevant per Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”); see also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the shamu.org domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”). The Disputed Domain Name incorporates the GOVWELL mark in its entirety, merely adding the gTLD “.com”. Therefore, the Panel could normally find here that the disputed domain name is identical or confusingly similar to the GOVWELL mark under Policy ¶ 4(a)(i).
However, as stated above and according to the evidence provided by the Complainant itself, cross-checked with the USPTO live database, the trademark relied upon by the Complainant is currently not registered. The rights in a pending US trademark are quite limited, in that they do not match the extensive enforcement rights conferred by a federal trademark registration, until such trademark is actually registered. See also WIPO Case D2011-1707, Prom Night Events v. YourFormal Pty Ltd / Your Formal Australia Pty Ltd, Samir Kapoor. On a side note, the Respondent has informed that it has requested an extension of time, in order to file an opposition against the said trademark application. Consequently, the Complainant cannot demonstrate any registered trademark rights on “GOVWELL”.
Having said that, the Policy also allows for unregistered trademark rights and the Panel has examined that possibility, as well. Paragraph 1.3 of the WIPO Overview 3.0 refers to the elements a complainant needs to show, so as to successfully assert unregistered or common law rights in a mark: “To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g. consumer, industry, media) recognition, and (v) consumer surveys. […] Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice…”.
It is rather obvious to this Panel that, the Complainant has not been successful in asserting unregistered or common law rights, since it has not provided any evidence as described above. The Panel’s independent research has not traced any supporting evidence in that regard, either.
Therefore, the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), because it has failed to establish rights in the GOVWELL trademark.
Rights or Legitimate Interests
As Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze this second element of the Policy.
Registration and Use in Bad Faith
As Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze this third element of the Policy.
REVERSE DOMAIN NAME HIJACKING
Respondent alleges that Complainant is liable of reverse domain name hijacking because of its overall stance in the present matter.
Based on the available record, the Panel sees insufficient basis on balance to conclude that the Complaint was brought in bad faith and accordingly declines to make a finding here of reverse domain name hijacking.
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 govwell.com domain name REMAIN WITH Respondent.
Sozos-Christos Theodoulou, Panelist
Dated: February 1, 2024
