BODIS

#Krooz .com : When a 20 year old #domain predates the trademark, the #UDRP should fail

UDRP has been denied.

The domain Krooz.com was registered twenty years ago, in 1998. Currently, it’s being used as a cruises finder, but for the majority of its past, it was either parked or served some basic content.

A company operating from MyKrooz.com registered a trademark for KROOZ this year, asserting first use of it in 2015.

They filed a UDRP, seeking the transfer of Krooz.com to them.

Not so fast, said the National Arbitration Panelist, Nathalie Dreyfus. This domain predates the trademark and any claim of first use by several years!

“Therefore the facts indicate that Respondent registered the disputed domain name before Complainant applied for its trademark and before Complainant’s first use in commerce.  Complainant has not submitted either any evidence of unregistered or common law rights prior to the registration date of the disputed domain name or even that Complainant had come into existence at this time. Therefore, Respondent could not have entertained bad faith intentions at the time of registration of the disputed domain name in 2011 as Complainant’s rights appear to have been non-existent at this time. “

Unless the Respondent had used a time machine to find out,that 20 years later someone would secure a trademark for the domain, the 1998 registration was made without any malicious intentions.

The panelist ordered the domain to remain with the Respondent, but oddly, did not deliver a finding of Reverse Domain Name Hijacking, despite the Respondent’s request.

Full details on this decision for Krooz.com follow:

Godwin E. Enogieru / Krooz, Inc. v. Viktor Cherkasov

Claim Number: FA1810001809930

PARTIES

Complainant is Godwin E. Enogieru / Krooz, Inc. (“Complainant”), Texas, USA. Respondent is Viktor Cherkasov (“Respondent”), represented by Steven L. Rinehart of Registered Patent Attorney, Utah, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <krooz.com>, registered with Godaddy.com, LLC.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Nathalie Dreyfus as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 1, 2018; the Forum received payment on October 1, 2018.

On October 2, 2018, Godaddy.com, LLC confirmed by e-mail to the Forum that the <krooz.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 October 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 2018 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@krooz.com. Also on October 3, 2018, 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 October 23, 2018.

On October 24, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Nathalie Dreyfus 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 is a transportation network company based in Texas. Complainant offers ride-share services via a mobile application (or “app”) and its website located at the domain name <mykrooz.com>. Complainant’s very brief submission is limited to the following:

Respondent’s <krooz.com> domain name is identical or confusingly similar to Complainant’s KROOZ trademark.

Respondent has no rights or legitimate interests in the <krooz.com> domain name. Respondent’s registration of the disputed domain name has created a high difficulty on Complainant’s business.

Respondent registered and uses the <krooz.com> domain name in bad faith. Respondent registered the disputed domain name which could have been registered by Complainant as part of its brand. Complainant also underlines that the disputed domain name is being “held dormant” by Respondent.

B. Respondent

Respondent submits that he registered the <krooz.com> domain name for its generic value as a five-letter generic top-level domain (“gTLD”). Respondent also argues that his registration of the disputed domain name predates Complainant’s earliest claimed rights in the KROOZ trademark.

Respondent argues that it has rights or legitimate interests in the <krooz.com> domain name as it consists of a generic term. Respondent refers to several decisions to support his position including Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Forum Mar. 9, 2007) (concluding that the respondent had rights or legitimate interests in the domain name because it was a generic domain name reseller who owned numerous four-letter domain names) and Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Forum July 17, 2000) (finding that the complainant failed to prove that the respondent had no rights in the domain name and had registered and used the domain name in bad faith where the respondent is an Internet business which deals in selling or leasing descriptive/generic domain names).

Respondent asserts that he did not register or use the <krooz.com> domain name in bad faith as its registration of the disputed domain name predates Complainant’s rights in the KROOZ mark. Complainant had no registered trademark rights when Respondent registered the disputed domain name in 2011. Respondent submits that since his registration predates Complainant’s trademarks, no bad faith can exist. Respondent states that he did not have constructive or actual notice of Complainant’s rights. Respondent underlines that Complainant resides in a different hemisphere of the world than Respondent. Additionally, Respondent’s registration of generic, five letter domain names with the intent to sell it does not demonstrate bad faith. Finally, Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”) against Complainant.

FINDINGS

Complainant has adduced evidence that it has a registered trademark for KROOZ, namely United States Patent and Trademark Office (“USPTO”), Reg. No. 5,408,280, filed on June 14, 2016, registered on February 20, 2018 (first use in commerce on June 26, 2015) for goods in class 9 (downloadable mobile applications for connecting drivers and passengers). See Amend. Compl. Attach. 1.

Complainant’s domain name <mykrooz.com> was registered on October 2, 2015.

Respondent registered the disputed domain name on or around November 15, 2011. It was being passively held by Respondent.

DISCUSSION

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.

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.”

Taking the aforementioned provisions into consideration, this Panel decides as follows:

Identical and/or Confusingly Similar

Policy ¶ 4(a)(i) requires the Panel to consider first whether Complainant has established relevant trademark rights. Complainant has adduced evidence of rights in the term KROOZ, based upon its trademark registration with the USPTO, Reg. No. 5,408,280, filed on June 14, 2016, registered on February 20, 2018 (first use in commerce on June 26, 2015). See Amend. Compl. Attach. 1. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). For the purpose of Policy ¶ 4(a)(i), it is irrelevant where or when Complainant acquired its rights, as this is a low threshold test to determine whether Complainant has standing to bring this case.

The Panel therefore finds that Complainant’s registration of the KROOZ mark with the USPTO is sufficient to establish rights for the purposes of Policy ¶ 4(a)(i).

The Panel is also required to examine under Policy ¶ 4(a)(i) whether the disputed domain name <krooz.com> is identical or confusingly similar to Complainant’s trademark. Complainant appears to argue that Respondent’s <krooz.com> domain name is confusingly similar to the KROOZ mark in which it has rights, although the Panel notes that Complainant did not make any specific allegations to this effect. Nevertheless, the Panel notes that the disputed domain name reproduces the KROOZ mark in its entirety, without adornment. It is well-established that the addition of the “.com” gTLD when assessing whether a disputed domain name is identical or confusingly similar to a trademark is generally disregarded as it is a functional element. See David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017) (“Respondent arrives at the disputed domain name by simply taking Complainant’s mark in its entirety and adding the g TLD “.com”. This is insufficient to distinguish the disputed domain name from Complainant’s common law trademark.”).

The Panel therefore finds that the <krooz.com> domain name is identical to Complainant’s trademark.

Complainant has therefore satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

In view of the Panel’s finding on bad faith below, the Panel does not need to consider the issue of rights or legitimate interests in the disputed domain name <krooz.com> under Policy ¶ 4(a)(ii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sep. 20, 2002) (finding that, because a UDRP complainant must prove all three elements set out in Policy ¶ 4(a) in order to obtain relief from an administrative panel, a complainant’s failure to prove any one of those elements makes inquiry into the others unnecessary).

Registration and Use in Bad Faith

Policy ¶ 4(a)(iii) requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith registration and use, including but not limited to: “(ii) [respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct;”.

Complainant seems to rely on Policy ¶ 4(b)(ii) to support his claim that Respondent registered the disputed domain name in bad faith. However, to be able to demonstrate that Respondent registered the disputed domain name in bad faith, Complainant is required to show first that Respondent was aware of Complainant’s rights at the time of registration of the disputed domain name and that he intended to take advantage of such rights.

The Panel finds that Complainant has failed to demonstrate that Respondent registered the disputed domain name in bad faith in accordance with Policy ¶ 4(a)(iii) for failure to demonstrate that Respondent had awareness of Complainant’s rights (or potential rights) at the time of registration of the disputed domain name. In this regard, the evidence on record shows that:

– Respondent registered the disputed domain name <krooz.com> in November 2011, as shown by the historical WhoIs record of the disputed domain name dated November 15, 2011 (see Resp., Annex A);

– Complainant has rights in KROOZ based upon its trademark registration with the USPTO, Trademark Reg. No. 5,408,280, filed on June 14, 2016, registered on February 20, 2018, with a date of first use in commerce of June 26, 2015;

– Complainant has not asserted nor submitted evidence of use of its KROOZ trademark (ie. unregistered or common law rights) prior to or at the time of registration of the disputed domain name in November 2011.

Therefore the facts indicate that Respondent registered the disputed domain name before Complainant applied for its trademark and before Complainant’s first use in commerce. Complainant has not submitted either any evidence of unregistered or common law rights prior to the registration date of the disputed domain name or even that Complainant had come into existence at this time. Therefore, Respondent could not have entertained bad faith intentions at the time of registration of the disputed domain name in 2011 as Complainant’s rights appear to have been non-existent at this time. See Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”). See also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).

Furthermore, the Panel notes that there is no evidence on record that Respondent had awareness of Complainant’s potential rights at the time of registration of the disputed domain name. In the absence of any such evidence, the Panel finds no reason to doubt Respondent’s assertion that he registered the disputed domain name for its generic value as a five-letter generic domain name. The term “krooz” appears to be an alternate spelling for the generic term “cruise” and, although today KROOZ may be a source identifier for Complainant’s products, there is no evidence that Respondent knew or should have known of Complainant’s potential rights at the time of registration of the disputed domain name in 2011.

The Panel therefore finds that, based on the evidence on record, Respondent did not register the disputed domain name in bad faith. It is therefore not necessary for the Panel to examine whether the disputed domain name has been used in bad faith under Policy ¶ 4(a)(iii).

Complainant has therefore failed to satisfy Policy ¶ 4(a)(iii).

REVERSE DOMAIN NAME HIJACKING

Respondent has requested a finding of reverse domain name hijacking. Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See also Rule 15(e).

Although Complainant did not satisfy the standard to obtain the transfer of the disputed domain name, the Panel does not consider, based on the record, that this Complaint was brought in bad faith as an attempt at reverse domain name hijacking. In its determination, the Panel has taken into account the fact that Complainant has not been represented by legal counsel. See 130946 CANADA LIMITED O/A POSTER PALS v. Generic Domain Names c/o Jurgen Maaser, Claim Number: FA0703000945113 (“…the Panel takes into account the fact that Complainant is unrepresented by legal counsel, and therefore cannot be expected to have appreciated the requirements of the Policy. Simply because Complainant, lacking proper legal guidance, has failed to construct a satisfactory Complaint does not mean that Complainant is acting in bad faith”.).

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 <krooz.com> domain name REMAIN WITH Respondent.

Nathalie Dreyfus, Panelist

Dated: November 7, 2018


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Comments

One Response to “#Krooz .com : When a 20 year old #domain predates the trademark, the #UDRP should fail”
  1. Uknowledge says:

    Clueless Panelist.How do they appoint people like these ?This is a clear case of RDNH.Hope Rick adds them to his list.

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