Whoever claims aged domains aren’t better than new domain registrations, needs to have a reality check.
Aged domains offer protection from UDRP filings, in cases where some company comes up with a brand matching an existing domain and decides to bully the Registrant.
In the case of MorningSafe.com, a domain name registered in 2016, the domain’s registration – hardly aged – predates the Complainant’s mark by two years.
On top of that, the mark is for MORNINGSAVE, which the Complainant asserted is “too similar” to the domain.
The sole panelist at the National Arbitration Forum stated that the domain’s age determines who gets to keep the domain – the Respondent, in this case.
Full details on this decision follow:
A Mediocre Corporation v. Domain Admin / Domain Registries Foundation
Claim Number: FA1906001849931
PARTIES
Complainant is A Mediocre Corporation (“Complainant”), represented by Amanda K. Greenspon of Munck Wilson Mandala, LLP, Texas, USA. Respondent is Domain Admin / Domain Registries Foundation (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morningsafe.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 June 26, 2019; the Forum received payment on June 26, 2019.
On June 27, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morningsafe.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 July 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@morningsafe.com. Also on July 2, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 26, 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. 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 asserts trademark rights in MORNINGSAVE. Complainant holds a national registration for that trademark. Complainant submits 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 because it has no trademark rights; is not known by the same name; and there has been no bona fide use of the domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
The factual findings pertinent to the decision in this case are that:
1. Complainant provides online retail shopping services by reference to the trademark MORNINGSAVE;
2. The trademark is the subject of United States Patent & Trademark Office (“USPTO”) Regn. No. 5,610,186 registered November 20, 2018; and
3. the disputed domain name was registered on October 7, 2016 and resolves to a webpage featuring various links to third party suppliers of goods and services, some of which compete with the services offered by Complainant under the trademark.
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:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) 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.
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.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain name with the trademark the gTLD, “.com”, can be disregarded. The comparison resolves to that of MORNINGSAVE with “morningsafe” and in that regard Complainant’s legal representatives make the extraordinary submission that the expressions are “phonetically identical … because phonetically the terms … are indistinguishable.” The Panel notes that the expressions are only indistinguishable to someone with no facility in English spoken language. If what Complainant’s representatives meant to say was that the expressions are phonetically similar, that is another matter. In either case, nothing is said of the fact that the two expressions have completely different meanings. So much so that the Panel is not prepared to find that the disputed domain name is confusingly similar to the trademark.
Panel therefore finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy. That finding is dispositive of the matter and the Decision (below) follows accordingly. However, if for any reason the Panel’s paragraph 4(a)(i) conclusion might be questioned, the Panel has in this case gone on to find that Complainant also fails to establish paragraph 4(a)(iii) of the Policy.
Rights or Legitimate Interests
No finding required.
Registration and Use in Bad Faith
According to paragraph 4(a)(iii) of the Policy, Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Complainant has failed to show that the disputed domain name was registered in bad faith. The domain name was registered on October 7, 2016, more than two years before Complainant’s USPTO trademark registration. Complainant asserts that it has been using the trademark in commerce since August 13, 2015 and cites Exhibit C to the Complainant in support. Exhibit C in fact shows various screenshots of Complainant’s website on April 24, 2019 and nothing else.
The Panel observes that even the filing date of Complainant’s USPTO trademark was February 5, 2018, considerably later than the registration date of the domain name. The only support the Panel could find in the evidence for a commencement of use date of the trademark on August 13, 2015 was the “First Use” date provided for one class of the nominated services in the trademark application. There is no actual proof of use of any kind of the trademark prior to the registration of the disputed domain name.
Complainant argues that Respondent had actual or constructive knowledge of Complainant’s trademark rights. Putting to one side the consistent rejection by UDRP panelists of the notion of constructive knowledge in proceedings under the Policy, it would not have been possible for Respondent to be aware of a non-existent application. As to actual knowledge, there is nothing to indicate to the Panel that Respondent was likely to be aware of Complainant’s use of the trademark at the date of registration of the domain name. In coming to that conclusion, the Panel has weighed all the evidence, including the fact that the disputed domain name has a meaning and possibly laudatory use of its own, quite distinct from that of the trademark. The Panel finds insufficient proof of registration in bad faith (see, for example, See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”).
Panel finds that Complainant has not satisfied the third element of the Policy.
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <morningsafe.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: July 27, 2019
