Tolles.com was registered in 2003 and was hit with a UDRP 19 years later

The domain Tolles.com was registered in 2003, making it 19 years old currently.

In 2011, Tolles Development Company LLC was formed in Arizona; in 2022 the company filed a trademark application with the USPTO for the mark TOLLES DEVELOPMENT COMPANY.

At the same time, they filed a UDRP to usurp Tolles.com. How did that play out?

Not too good.

The sole panelist at the Forum (NAF) pointed out these facts about the domain’s seniority over a pending trademark application and denied the Complainant’s request for a transfer.

The Respondent appears to be a Chris Tolles, who also owns the matching .org domain name. They did not file a response.

In our opinion, this should have been a case of Reverse Domain Name Hijacking as well.

The domain transfer was denied.

Tolles Development Company LLC v. tolles.org

Claim Number: FA2207002005605

PARTIES

Complainant is Tolles Development Company LLC (“Complainant”), represented by John L. Krieger of Dickinson Wright PLLC, Nevada, USA. Respondent is tolles.org (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with Network Solutions, 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.

The Honorable Neil Anthony Brown QC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 25, 2022; the Forum received payment on July 25, 2022.

On July 27, 2022, Network Solutions, LLC confirmed by e-mail to the Forum that the domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 29, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2022 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@tolles.com. Also on July 29, 2022, 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 August 21, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 made the following contentions.

Complainant is a Nevada-based real estate company. Complainant claims rights in the TOLLES DEVELOPMENT COMPANY mark through trademark applications to the USPTO and common law rights. See Amend. Compl. Ex. 2. The disputed domain name is confusingly similar because it incorporates a dominant portion of Complainant’s mark with the addition of the “.com” generic top-level domain (“gTLD”).

Respondent lacks rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TOLLES DEVELOPMENT COMPANY mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with making a bona fide offering of goods or services or for a legitimate noncommercial or fair use.

Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to host third party links from which Complainant argues Respondent benefits financially. Furthermore, Respondent sought to conceal its identity when registering the disputed domain.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

1. Complainant is a United States company engaged in the real estate industry.

2. Respondent registered the disputed domain name on August 24, 2004.

3. On July 6, 2022, Complaint applied to the United States Patent and Trademark Office (“USPTO”) for two trademarks for TOLLES DEVELOPMENT COMPANY.

4. Complainant has not established its rights in the TOLLES DEVELOPMENT COMPANY mark through trademark applications to the USPTO or through common law rights.

5. Complainant has not established that the disputed domain name was registered and used in bad faith.

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.

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. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights to the TOLLES DEVELOPMENT COMPANY mark through trademark applications made to the USPTO and also though common law or unregistered trademark rights.

The requirement for proof of trademark rights is essential as the foundation for a claim under the ICANN Policy, the UDRP. That is because the UDRP provides that a complainant must show that the domain name being sought in the proceeding is identical or confusingly similar to “a trademark or service mark in which the complainant has rights.”

So far as the issue of trademark applications made to the USPTO is concerned, the Complainant adduces evidence that on July 6, 2022 it made two applications to the USPTO for the trademark TOLLES DEVELOPMENT COMPANY. That is expressed in the Amended Complaint in the following form:

“Complainant’s trademarks relevant to this proceeding are:

TOLLES DEVELOPMENT COMPANY (Ser. No. 97491795) Class 37 for real

estate development services in the field of mixed-use properties, shopping

centers, warehouses, and industrial properties.

TOLLES DEVELOPMENT COMPANY (Ser. No. 97491770) Class 36 for real

estate services, namely, rental, brokerage, leasing and management of

commercial property, offices and office space.”

However, they are not trademarks, but applications for trademarks. The applications have not been registered as trademarks. Applications for trademarks are not accepted as trademarks for several reasons, not the least of which is that they have not been examined to see if they should be approved as trademarks. In any event, the fact is that they are not trademarks. There are many prior UDRP decisions by panels to that effect.

The Complainant has thus not established the first alternative it relies on, namely that it has registered trademarks on which to base its case.

However, a complainant may nevertheless show that it has established a common law or unregistered trademark, as such a trademark is accepted in this jurisdiction. The Complainant makes that submission, and it is therefore incumbent on the Panel to decide, on the evidence, if the Complainant has proved a common law or unregistered trademark.

The Complainant’s case on this issue is expressed in the following way:

“Tolles has used its TOLLES Marks in connection with real estate services since as early as 2016. It has expended significant resources in the protection, enforcement, and advertising of the same. By virtue of this exclusive use, Tolles has accrued substantial goodwill in its TOLLES Marks.”

No evidence has been submitted to prove any of those allegations. A common law trademark is proved by evidence, not by unsupported allegations. It must be shown, by evidence, that the mark or sign that is said to be the trademark is the mark or sign used to designate what it is that the complainant does and that this is recognised in the market as the source of the goods and services provided by the Complainant.

Clearly, it is a good start that the Complainant has used the mark since 2016 and currently uses it, but it is only a start. There must be evidence of whether and how the mark is treated or received by the relevant market. Usually this is done by evidence of advertisements placed by the complainant, expenditure on advertising or public relations and recognition of the mark in one form or another. If, for instance, a complainant has been given an industry award or some other form of recognition, that would be valuable evidence. But simply to allege that the sign has been used is not enough. In any event, that is not evidence of use, but merely a bare allegation, unsupported by facts.

The Complainant has therefore not proved that it has a common law or unregistered trademark for TOLLES DEVELOPMENT COMPANY.

The Complainant has therefore not shown that it has a trademark and, in consequence, its claim cannot succeed.

This decision does not mean that the Complainant is shut out completely from using the UDRP to pursue this claim. It may well be open to it, on advice, to file another Complaint with proper and complete evidence. The purpose of this ruling is not to frustrate the Complainant or prevent it from using the UDRP, but to do justice and fairness to both sides and at the present it would not be fair to the Respondent or a proper application of the UDRP to allow the claim to proceed in its present form or to succeed.

The Complainant has thus not established the first of the three elements that it must show.

Rights and Legitimate Interests

In view of the other findings of the Panel, it is not necessary for the Panel to make findings under this heading

Registration and Use in Bad Faith

One of the essential elements that the Complainant must prove is that the Respondent both registered and has used the domain name in bad faith.

That requirement is set out in paragraph 4(a)(iii) of the UDRP which is that the Complainant must prove that the “domain name has been registered and is being used in bad faith.”

Clearly, it will be bad faith if the Respondent has used the domain name with the intention of causing confusion with the complainant’s trademark as to the source of the products on the Respondent’s website, which in the present case is the offering of the Drill Driver, Cordless Power Tools, Tool Belts, Circular Saws and Metal Cutter advertised on the Respondent’s website.

Any other act of bad faith can also be relied on by the Complainant.

The difficulty of this issue as it has been presented on the evidence is that the Complainant must prove that its trademark was on foot when the Respondent advertised its goods for sale or engaged in whatever other act of bad faith is relied on to prove bad faith. In other words, there must be something to which the bad faith was or could have been directed. Often, it will be shown that the there was a trademark on foot when the Respondent used the domain name to sell its competing goods. That allegation is made by the Complainant and the allegation is also made that the Respondent sought to conceal its identity when registering the disputed domain name.

In the present case, even if there were a trademark, which could only be a common law or unregistered trademark, it would not have been in existence when the Respondent registered its domain name and advertised the goods in question on its website. That is so because the Complainant itself has alleged that it did not start to use its claimed trademark of TOLLES DEVELOPMENT COMPANY until 2016. It did this by alleging in the Complaint that “Tolles has used its Tollles Marks in connection with real estate services since as early as 2016.”

Indeed, in the case of both of the applications for registered trademarks, the Complainant stated to the USPTO:

“First use anywhere(.) At least as early as 01/24/2017.

First use in commerce(.) At least as early as 01/24/2017.”

In other words the Complainant is alleging here that the claimed trademark was not used until January 1, 2017.

The domain name, however, was registered long before that date, namely on August 24, 2004. Accordingly, when the Respondent registered its domain name on that date, the Complainant did not have a trademark of any sort and it does not claim to have used the claimed trademark at any time prior to August 24, 2004.

Not only is that so, but the website of the Secretary of State of Nevada, where the company was incorporated, says with respect to “Tolles Development Company” that is formation date was August 8, 2016. Thus, when the domain name was issued on August 24, 2004, the Complainant did not exist. Clearly, bad faith could not have been committed against a complainant that did not exist at that time.

So, the domain name was registered 12 years before the claimed trademark and 12 years before the Complainant came into existence, and therefore there was nothing at which the alleged bad faith of the registration of the domain name could have been directed on August 24, 2004.

Accordingly, on the evidence as it is, the Complainant has not shown that the domain name was registered in bad faith.

The Complainant has thus not made out the third of the three elements that it must establish.

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

DECISION

Accordingly, it is Ordered that the domain name REMAIN WITH the Respondent.

The Honorable Neil Anthony Brown QC

Panelist

Dated: August 25, 2022

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