MarketSquare.com : 22 year old domain was challenged via the UDRP process

The domain name MarketSquare.com was registered in 1995, making it 22 years old today.

And yet, a company challenged its ownership, by filing a UDRP at the National Arbitration Forum.

Complainant MarketSquare, Inc. DBA MarketSquare registered the MARKETSQUARE mark with the United States Patent and Trademark Office in 2017.

The Respondent’s internal counsel surely had fun with this argument, because not only do they hold the domain since 1995, but they also acquired rights to the exact same mark, MARKETSQUARE – in a different class than the Complainant.

Nelson A. Diaz, sole panelist, ordered the domain MarketSquare.com to remain with the Respondent.

Now, how on earth this decision wasn’t accompanied by a finding of Reverse Domain Name Hijacking, is beyond our comprehension.

Full details on the UDRP decision for MarketSquare.com follow:

MarketSquare, Inc. DBA MarketSquare v. Domain Admin / Endurance International Group West, Inc / Domain Admin / The Endurance International Group Inc

Claim Number: FA1707001739120

PARTIES

Complainant is MarketSquare, Inc. DBA MarketSquare (“Complainant”), represented by Richard C. Balough of Balough Law Offices, LLC, Illinois, USA. Respondent is Domain Admin / Endurance International Group West, Inc / Domain Admin / The Endurance International Group Inc (“Respondent”), represented by Pamela Huergo of Endurance International Group—West, Inc.—Corporate Counsel, Massachusetts, USA.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <marketsquare.com> and <themarketsquare.com>, registered with Domain.com, LLC.

PANEL

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

Hon. Nelson A Diaz (ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 10, 2017; the Forum received payment on July 10, 2017.

On July 10, 2017, Domain.com, LLC confirmed by e-mail to the Forum that the <marketsquare.com> and <themarketsquare.com> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC has verified that Respondent is bound by the Domain.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 July 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2017 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@marketsquare.com and postmaster@themarketsquare.com. Also on July 13, 2017, 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 August 1, 2017.

On Augusut 10, 2017, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Nelson A. Diaz (ret.) 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant operates an online retail business that sells and delivers furniture to customers. Complainant uses the MARKETSQUARE mark in conjunction with its business practices. Complainant registered the MARKETSQUARE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,207,229; registered May 23, 2017). See Amend. Compl., at Attached Annex A. Respondent’s <marketsquare.com> and <themarketsquare.com> are confusingly similar to Complainant’s MARKETSQUARE mark because they incorporate the mark in its entirety, adding the generic term “the” and the “.com” generic top level domain (“gTLD”).

Respondent does not have rights or legitimate interests in <marketsquare.com> and <themarketsquare.com>. Respondent is not commonly known by the disputed domain names. Complainant has not authorized or licensed Respondent to use the MARKETSQUARE mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <themarketsquare.com> resolves to a parked webpage hosting click-through links unrelated to Complainant, presumably for Respondent’s commercial benefit. See Amend. Compl., at Attached Annex B. Respondent’s <marketsquare.com> resolves to an inactive website with no content. See Amend. Compl., at Attached Annex B.

Respondent registered and is using <marketsquare.com> and <themarketsquare.com> in bad faith. The <themarketsquare.com> domain attracts internet users to a parked webpage hosting click-through links to products and services unrelated to Complainant’s business for Respondent’s commercial gain. The <marketsquare.com> domain is an inactive website lacking any content, with no demonstrable intent to make an active use of it. See Amend. Compl., at Attached Annex B.

B. Respondent

Respondent’s “predecessor in interest” registered the MARKETSQUARE mark with USPTO (e.g. Reg. No. 3,089,628; registered May 9, 2006). Through multiple assignments, Respondent has acquired the rights to the MARKETSQUARE mark. See Resp., at Attached Annex C. Respondent is the current owner of <marketsquare.com> and <themarketsquare.com>. Respondent registered <marketsquare.com> on March 9, 1995, and <themarketsquare.com> on April 14, 2011. See Resp., at Attached Annex B.

Respondent’s registration of the MARKETSQUARE mark and use of the <marketsquare.com> and <themarketsquare.com> domains predates Complainant’s registration and use of the MARKETSQUARE mark. Respondent has maintained its trademark rights in the MARKETSQUARE mark consistently since 2006. Complainant fails to provide evidence that Complainant’s rights predate Respondent’s rights.

Respondent had no knowledge of Complainant and its MARKETSQUARE mark. Respondent registered <marketsquare.com> and <themarketsquare.com> prior to Complainant’s mark registration and start of business. Respondent did not register <marketsquare.com> and <themarketsquare.com> with intent to disrupt Complainant’s business, create a likelihood of confusion with Complainant’s business, or prevent Complainant from reflecting the MARKETSQUARE mark online. Respondent has no intent to rent or sell the domain names. Moreover, Respondent is not receiving financial benefit from the links hosted on the <themarketsquare.com> domain.

FINDINGS

Complainant has not met the requirements of ICANN Policy ¶ 4(a)(ii)or Policy ¶ 4(a)(iii)or Policy ¶ 4(b).

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.

 

Preliminary Issue: Multiple Respondents

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the disputed domain names are “held by wholly-owned subsidiaries or aliases of a holding company.” See Amend. Compl., at [5]. Complainant argues that the physical address and the contact information is identical for both domain registrants. See Amend. Compl., at Attached Annexes B–C. Moreover, the parent company, Endurance International Group Holding, Inc. has the same address as the subsidiaries identified in this Complaint. See Amend. Compl., at Attached Annex D.

Identical and/or Confusingly Similar

Complainant operates an online retail business that sells and delivers furniture to customers. Complainant uses the MARKETSQUARE mark in conjunction with its business practices. Complainant claims it registered the MARKETSQUARE mark with USPTO (e.g., Reg. No. 5,207,229; registered May 23, 2017). See Amend. Compl., at Attached Annex A. The general consensus among panels is that USPTO registrations are sufficient to show rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel may find that Complainant’s USPTO registration is sufficient to show rights in the MARKETSQUARE mark.

Complainant asserts that Respondent’s <marketsquare.com> and <themarketsquare.com> are confusingly similar to Complainant’s MARKETSQUARE mark because they incorporate the mark in its entirety, adding the generic term “the” and the “.com” gTLD. A confusing similarity exists where a disputed domain name contains the complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain. See e.g., Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016). As such, the Panel determines that the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See e.g., Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016).

Rights or Legitimate Interests

The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

Respondent claims it has maintained its trademark rights in the MARKETSQUARE mark consistently since 2006, thereby showing rights and legitimate interest in the mark and domain names. Moreover, Respondent contends that Complainant fails to provide evidence that Complainant’s rights predate Respondent’s rights. “As the domain name was registered well before [complainant’s] trademarks and as it was clearly used for a legitimate purpose before the registration of the trademarks and a fortiori, before notification of the dispute, it is clear that [r]espondent has rights and legitimate interests in the domain name.” Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007). Therefore, the Panel finds that Respondent does have a legitimate interest in the domain names because Respondent registered the disputed domain names for a legitimate business purpose prior to Complainant’s application for registration of the mark and Complainant has not proven any earlier use of the mark. See e.g., Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Forum Sept. 1, 2000).

Registration and Use in Bad Faith

The Panel concludes that Respondent has rights or legitimate interests in the <marketsquare.com> and <themarketsquare.com> domain names pursuant to Policy ¶ 4(a)(ii). The Panel may also find that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

The Panel further finds that Respondent has not registered or used the <marketsquare.com> and <themarketsquare.com> domain names in bad faith if it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant’s business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).

Respondent claims its registration of the MARKETSQUARE mark and use of the <marketsquare.com> and <themarketsquare.com> domains predates Complainant’s registration and use of the MARKETSQUARE mark. See Resp., at Attached Annexes A–B. It is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration. Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001). Because Respondent’s domain name registration predated Complainant’s trademark filing date and alleged date of first use, the Panel finds that “there was no bad faith on the part of Respondent when registering the subject domain name.” TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Forum Mar. 28, 2005).

Next, Respondent asserts that it did not register <marketsquare.com> and <themarketsquare.com> with intent to disrupt Complainant’s business, create a likelihood of confusion with Complainant’s business, or prevent Complainant from reflecting the MARKETSQUARE mark online. Panels have denied the complainant’s request because the complainant’s allegations that the respondent registered the disputed domain name to divert Internet users from the complainant’s business were not sufficiently substantiated under Policy ¶ 4(a)(iii). See e.g., Accu-Find Internet Servs. v. AccuFind, FA 94831 (Forum June 19, 2000). Additionally, Respondent states that it has no intent to rent or sell the domain names. Therefore, the Panel concludes that Respondent did not register the disputed domain names in bad faith where there was no evidence that it “was aware of the Complainant at the time it registered the domain name,” “[had no] intention to resell it,” and “ha[d] not prevented the Complainant from securing the more obvious choice of domain names.” Lydian Capital Advisors, LLC v. Aquino, D2005-0260 (WIPO Apr. 24, 2005).

Finally, Respondent contends that it is not receiving financial benefit from the links hosted on the <themarketsquare.com> domain. Moreover, Respondent had no knowledge of Complainant and its MARKETSQUARE mark. “[I]n the absence of any evidence of knowledge on the part of Respondent of Complainant, its mark or its services at the time Respondent acquired the domain name,” the Panel finds that “Complainant has failed to establish registration in bad faith.” It Takes 2 v. C.,J., FA 384923 (Forum Feb. 15, 2005).

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 <marketsquare.com> and <themarketsquare.com> domain names REMAIN WITH Respondent.

Hon. Nelson A. Diaz (ret.), Panelist

Dated: August 24, 2017

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