WeatherUSA.com: Another case where the #domain is senior to the trademark

The domain WeatherUSA.com was registered in 1998. WeatherUSA, LLC registered the WEATHERUSA mark in 2019, claiming first use in 2001 and common law mark established via its domain weatherusa.net. In 2021, they filed a UDRP to usurp the .com.

The Respondent acquired the domain in 2013 and challenged the claims of first use of the mark in 2001.

Respondent argued the doctrine of laches applies, because Respondent has held the Domain Name since 2013, Complainant did not claim the Domain Name for twelve years preceding Respondent’s acquisition of the Domain Name, and waited from 2013 to 2021 before initiating the current proceedings.

The Forum (NAF) panelist noted that the Complainant otherwise provides essentially no evidence of the extent of its business, including geographic reach, customer base, extent of advertising or third party recognition in the years predating the 2019 trademark registration.

Final decision: Deny transfer of the domain WeatherUSA.com to the Complainant.

The domain transfer was denied.

weatherUSA, LLC v. Domain Administrator / DVLPMNT MARKETING, INC.

Claim Number: FA2111001974143

PARTIES

Complainant is weatherUSA, LLC (“Complainant”), represented by Bryce D. Miracle, Ohio, USA. Respondent is Domain Administrator / DVLPMNT MARKETING, INC. (“Respondent”), represented by William Silvey of The Silvey Law Firm, Louisiana, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is (“Domain Name”), registered with DNC Holdings, Inc..

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.

Nicholas J.T. Smith as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 19, 2021; the Forum received payment on November 19, 2021.

On November 23, 2021, DNC Holdings, Inc. confirmed by e-mail to the Forum that the domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. 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 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2021 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@weatherusa.com. Also on December 2, 2021, 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 December 20, 2021.

On December 27, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.

On December 26, 2021 the Complainant filed an unsolicited additional submission. On January 4, 2022 the Panel issued a Panel Order under Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). This order indicated that the Panel would consider the Complainant’s additional submission and provided 5 working days for Respondent to provide a) any evidence or submissions in response to Complainant’s additional submission and b) any documentary evidence in support of the claim made in the Response that Respondent operates an information-based website providing weather services from the Domain Name. Complaint would then have an opportunity to provide evidence and submissions in response. On January 11, 2022, Respondent provided an additional submission in response to the Panel Order and on January 17, 2022 the Complainant provided a further response.

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, weatherUSA, LLC, specializes in weather forecasting and reporting. Complainant maintains registration in the WEATHERUSA mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 5,907,603, registered Nov. 12, 2019). Furthermore, Complainant asserts common law rights over the WEATHERUSA mark through its extensive use, promotion, advertising, and public notoriety in the mark since 2001 including from a website at www.weatherusa.net (“Complainant’s Website”). The domain name is identical or confusingly similar to Complainant’s WEATHERUSA mark because it wholly incorporates Complainant’s mark merely adding in the “.com” generic top-level domain (gTLD) to form a domain name.

Respondent does not have any rights or legitimate interests in the domain name because Respondent is not commonly known by the Domain Name. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because the resolving website (“Respondent’s Website”) displays pay-per-click links that compete with Complainant’s own services.

Respondent registered and uses the domain name in bad faith because Respondent is making a general offer to sell the Domain Name and has previous adverse decisions against it in other UDRP proceedings. Respondent’s use of the Domain Name diverts users away from Complainant’s website onto Respondent’s Website that features pay-per-click advertisements for businesses that compete with Complainant’s services. Respondent acted with actual and/or constructive knowledge of Complainant’s rights in the WEATHERUSA mark.

B. Respondent

Respondent, Domain Administrator/DVLPMNT Marketing, Inc., contends that its registration in the domain name predates Complainant’s USPTO registration and that Complainant has not provided sufficient evidence to show common law rights prior to the USPTO registration.

Respondent asserts that it has rights or legitimate interests in the domain name because it has provided services on the Respondent’s Website since 2013. Respondent uses the Domain Name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because it offers information on weather conditions in the United States.

Respondent contends that it did not register the domain name in bad faith because the Domain Name was registered prior to Complainant acquiring rights in the WEATHERUSA mark with a trademark authority. Respondent was not aware of Complainant prior to the registration of the Domain Name. Respondent argues the doctrine of laches applies because Respondent has held the Domain Name since 2013, Complainant did not claim the Domain Name for twelve years preceding Respondent’s acquisition of the Domain Name, and waited from 2013 to 2021 before initiating the current proceedings

C. Additional Submissions

Complainant’s initial additional submissions provide evidence of the Complainant providing weather information services at the Complainant’s Website prior to the Respondent acquiring the Domain Name. Furthermore the submissions enclose a press release dated 2010 about the Complainant’s services and a listing of the Complainant’s services on the National Weather Service website in 2012.

Respondent’s Additional Submissions submit that notwithstanding the use of the Complainant’s Website prior to 2013, such use was by a different registered entity to the Complainant, which was only established in 2012. Respondent submits that at best, Complainant was using the (then) unregistered WEATHERUSA mark for 8 months prior to the Respondent’s acquisition of the Domain Name and there is no evidence Respondent should have known of Complainant’s existence at that time.

In addition, the Respondent submits that the landing page at the Respondent’s Website contains a series of links, a number of which are to websites providing weather services (and all of which are unconnected to the Complainant’s Website).

In response to the Respondent’s Additional Submissions, Complainant submits that the use of the WEATHERUSA mark prior to its formation on May 30, 2012 was by a predecessor in title and hence rights arising from the use of the unregistered WEATHERUSA mark extend to the Complainant. Secondly the Complainant submits that the content of the Respondent’s Website consists of pay-per-click advertisements to weather related services which is not a bona fide use of the Domain Name.

FINDINGS

Complainant having failed to establish bad faith registration of the domain name has not established all required elements of its claim, and thus its complaint must be denied.

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.

Identical and/or Confusingly Similar

Complainant has rights in the WEATHERUSA mark based upon registration of the mark with the USPTO (e.g. Reg No. 5,907,603, registered Nov. 12, 2019). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).

The Panel finds that the Domain Name is identical to the WEATHERUSA mark as it wholly incorporates the WEATHERUSA mark and adds the “.com” gTLD. Adding a gTLD to a trade mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”)

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.

Registration and Use in Bad Faith

The Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). 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.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).

The Domain Name consists of two generic words (being “weather” and “usa”). Each of these words, and the combination “weather usa” have entirely descriptive meanings that relate to weather services in the United States).

While Complainant and its predecessor in title had operated a website at www.weatherusa.net for some years prior to the registration of the Domain Name years it only applied to register the WEATHERUSA mark in 2019. Complainant otherwise provides essentially no evidence of the extent of its business, including geographic reach, customer base, extent of advertising or third party recognition (aside from it being listed as one of many weather providers on the National Weather Service in 2010). In particular Complainant does not establish that its WEATHERUSA mark is so well-known and ubiquitous that the Panel can conclude, for that reason alone, that the Respondent’s 2013 acquisition of a domain name (registered in 1998) containing the words “weather” and “usa” was motivated by awareness of Complainant (which would generally amount to bad faith registration), as opposed to acquisition of the Domain Name for its inherent meaning being two descriptive words. Nor does Complainant provide any evidence relating to the identity of Respondent, such as past dealings with Complainant, or connection with Complainant’s businesses, such that it would be reasonable to infer Respondent was aware of Complainant at the time of registration.

Therefore, in order to determine if Respondent’s registration of the Domain Name was motivated by awareness of Complainant or the inherent qualities of the words comprising the Domain Name, it is necessary to consider evidence of Respondent’s use of the Domain Name. The Domain Name resolves to a pay-per-click page (“Respondent’s Website”) with advertisements predominantly for weather services in the United States. Complainant submits that “Respondent registered and is using the Domain Name primarily to profit from and exploit Complainant’s WEATHERUSA mark”. The Panel does not agree with this conclusion. While the Respondent’s Website does advertise weather services, similar to those offered by the Complainant, the services advertised on the Respondent’s Website correlate directly with the descriptive words that comprise of the Domain Name. There is no other evidence from the Respondent’s Website to infer that the Respondent has ever used the Domain Name to take advantage of any reputation (no evidence of reputation being placed before me) held by Complainant in the WEATHERUSA mark as opposed to the descriptive meaning of the words comprising the Domain Name.

The Panel is not satisfied that the Respondent offering the Domain Name for sale for what appears to be a significant sum by itself satisfies the requirements of Policy ¶ 4(b)(i). The Domain Name consists of two descriptive words that (most likely) the Respondent incurred considerable expense to purchase in 2013 when it acquired the Domain Name. Given the absence of evidence that the Respondent’s acquisition of the Domain Name was motivated by any awareness of the Complainant, I am not satisfied that Respondent acquired the Domain Name for the purpose of selling the domain name to the Complainant or a competitor of the Complainant (as opposed to selling the domain name to an entity interested in purchasing the Domain Name because it consists of two descriptive words for services used by virtually every adult in the United States). See Kaleidoscope Imaging, Inc. v. V Entertainment aka Slavik Viner, FA 203207 (Forum Jan. 5, 2004)

Equally while the Respondent has undoubtedly been the subject of numerous UDRP proceedings that have ordered the transfer of a domain name held by the Respondent, the requirement of Policy ¶ 4(b)(ii) is that the Panel be satisfied that the Domain Name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. See Peoples Bank of Mississippi v. Domain Admin / Xedoc Holding SA, FA 1906337 (Forum Nov. 11, 2020). As noted above, I am not satisfied that the registration of the Domain Name was motivated by any awareness of the Complainant. Finally there is no evidence before the Panel that the Respondent has disrupted the Complainant’s business. In short the Panel is not satisfied that Respondent has 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).

The Panel notes that the use of pay-per-click sites is commonly associated with a finding of bad faith registration and use under the Policy. However this requires a Panel to reach a conclusion that the respondent in question is acting in bad faith by seeking to capitalize on the reputation and goodwill of a complainant’s mark. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview”) notes at 2.9 on the question of whether pay-per-click pages support respondent rights and legitimate interests

“Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.

Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.”

In the present case Complainant has not provided evidence that its trademark is famous or widely-known or indeed any basis for the Panel to conclude that Respondent’s registration of the Domain Name was motivated by a desire to take advantage of any confusion with Complaint’s WEATHERUSA mark rather than the descriptive meaning of the words “weather usa”. Having failed to establish that the domain name was registered in bad faith, Complainant cannot satisfy the bad faith prong of Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See 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.”).

The Uniform Domain Name Dispute Resolution Policy, is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited — designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting — and not intended to thwart every sort of questionable business practice imaginable. ”). In the present case Respondent has registered a domain name consisting of the words “weather usa” and redirected the domain name to a pay-per-click website offering advertisements for weather services in the United States. Absent any evidence of fame of the WEATHERUSA mark or any other evidence that Respondent has engaged in bad faith conduct, those facts are not sufficient to establish bad faith under the Policy.

As reasoned above, the Panel finds that Complainant has failed to prove that the Domain Name was registered and used in bad faith.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

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

Nicholas J.T. Smith, Panelist

Dated: January 19, 2022

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