Complainant is Westville Group Inc. of New York, New York, United States of America (“United States”), represented by Gearhart Law, United States.
Respondent is Rob Waters aka Robert Waters of Atkinson, New Hampshire, United States, self-represented. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2018. On June 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 2, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2018. The Response was filed with the Center on July 26, 2018.
The Center appointed Richard W. Page as the sole panelist in this matter on August 3, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is a New York business that began advertising and rendering business services across the United States using various trademarks in 2003, covering bar services, catering services, restaurant services, including sit-down service of food and take-out restaurant services. Complainant and its founders spent hundreds of thousands of dollars marketing the Westville Group’s services from 2003 onward. Complainant’s sales have historically always been particularly strong in the New York area. In 2006, Complainant established a website to further market its products, which became operational in October 2006 at . Complainant has made use of the trademarks W and W WESTVILLE for many years. After launching the website, Complainant invested heavily in local and online marketing campaigns, including banner advertising, targeted email campaigns, mass mailers, yellow pages, word of mouth, radio and print-ads at local businesses. Westville Group has been a commercial success and has grown to employ many individuals and to do millions of dollars in annual sales.
Complainant is the owner of W and W WESTVILLE trademarks registered with the United States Patent and Trademark Office (USPTO), as evidenced by the Registration Nos. 5112742 and 5112743, registered on January 3, 2017 and showing a first use in interstate commerce of 2003 (the “WESTVILLE Mark”).
The registration date of the Disputed Domain Name is November 24, 1998. Currently, the Disputed Domain Name resolves to a parked website. 5. Parties’ Contentions A. Complainant
As noted above, Complainant contents that it is the owner of the WESTVILLE Mark which was first used in interstate commerce in 2003.
Complainant contends that the Disputed Domain Name was in use by a business named “Westville” up until at least September 20, 2008. Complainant further contends that the Disputed Domain Name has not been in any sort of commercial use since as early as March 25, 2009. It has either been parked or not in use in connection with the name “Westville”. During such time, Complainant has attempted to acquire the Disputed Domain Name but has been unsuccessful.
Complainant alleges that it sought to “retrieve” the Disputed Domain Name as early as December 2011 in preparation for embarking on a social media and digital media national strategy. Complainant further alleges that, in February 2016, it attempted to purchase the Disputed Domain Name from its owner, but to no avail.
Complainant asserts that the Disputed Domain Name has not been used in any commercial way by its holders, especially with a corresponding United States Federal trademark registration, since that time. Complainant further asserts that even today the Disputed Domain Name is being used as a form of bad faith in order for the current owner to gain a profit from its sale or transfer. The Disputed Domain Name that exists today is the same as it was for many years and has not changed its appearance nor has it done any business of any kind due to lack of the site having e-commerce capabilities.
Complainant states that it has continuously marketed its goods using the WESTVILLE Mark and has been marketing its goods at the website since October 2006. Complainant further states that, using the WESTVILLE Mark, Complainant has grossed millions of dollars in revenue providing restaurant and catering services and that Complainant has thousands of clients across the United States.
Complainant avers that its WESTVILLE Mark has become distinctive and well-known since 2003. Complainant further avers that individuals and entities have come to recognize the WESTVILLE Mark as a distinctive identifier and that the WESTVILLE Mark has become associated in the mind of the purchasing public with Complainant.
Complainant argues that it has the exclusive right to use the WESTVILLE Mark in the United States and that confusing similarity is self-manifest. The Disputed Domain Name wholly encompasses the WESTVILLE Mark in which Complainant has registered trademark rights. The test for confusing similarity considers several factors, including, similarity in appearance, sound, connotation, and commercial impression, as well as the nature of the services offered under the mark at issue and the “dominant textual elements” of the mark.
Complainant further contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraphs 4(a)(ii) and 4(c) of the Policy, as Respondent has unlawfully registered the Disputed Domain Name in bad faith for the purpose of depriving Complainant of its use and to benefit from the sale of services similar to those of Complainant. Respondent is, therefore, not making legitimate noncommercial or fair use of the Disputed Domain Name.
Complainant alleges that the Disputed Domain Name has recently been unavailable and not in use in any commercial way. Complainant further alleges that Respondent registered the Disputed Domain Name with knowledge of Complainant’s Mark. Complainant further alleges that Respondent has not been commonly known by the Disputed Domain Name, prior to the accrual of Complainant’s trademark rights.
Complainant asserts that Respondent has not carried on any legitimate business at the Disputed Domain Name and the Disputed Domain Name was registered in bad faith with knowledge of Complainant’s rights. Complainant further asserts that Respondent registered the Disputed Domain Name for the purpose of confusing Internet users seeking the services of Complainant. Complainant further asserts that Respondent’s registration of the Disputed Domain Name is an attempt to prevent Complainant from reflecting its mark in the Disputed Domain Name, and from benefitting from the goodwill and notoriety that Complainant has built into its WESTVILLE Mark in the form of business intended for Complainant. On the sites Grub Hub and Yelp consumers are confused while searching for Complainant’s restaurant and catering services. The Disputed Domain Name is constantly appearing in searches and thereby confusing customers that the restaurant and catering services that they are seeking are closed since the Disputed Domain Name is not being used in any commercial way.
Complainant argues that Respondent has sought to unjustly enrich itself by misappropriating the Westville Group’s goodwill and create a likelihood of confusion with WESTVILLE Mark, at the expense of Complainant. Complainant further argues that Respondent registered the Disputed Domain Name for the purpose of depriving Complainant of the use of the Disputed Domain Name and its WESTVILLE Mark online, and benefiting financially from the sale of the Disputed Domain Name to Complainant in violation of paragraphs 4(a)(iii) and 4(b) of the Policy.
Complainant states that all evidence suggests, that even today the Disputed Domain Name is being used in bad faith in order for Respondent to profit from its sale or transfer. The current use of “www.” is clearly a bad faith attempt at creating a web page in order to fool consumers and ICANN that actual business is transpiring when it is clearly not. There is no current commerce of any kind on “www.” just advertisements sometimes associated with parked domain names. B. Respondent
Respondent contends that the Disputed Domain Name is not confusingly similar to the WESTVILLE Mark. There are many different factors to consider, such as appearance, commercial impression, nature of the services offered and the dominant textual elements of the mark. There are no textual similarities as offers nothing other than its simple text. The website at , however, offers a specific script with a “W” place above the word Westville, which the Disputed Domain Name does not. Respondent further contends that the two services that are being offered are completely different. Under the Disputed Domain Name, the service being offered by Respondent is as a motor vehicle wholesaler. Complainant is a food service company. There is no similarity between the services being offered.
Respondent alleges that the connotation associated with “Westville” is extremely broad as it is considered a geographic indicator. Additionally, there are many different businesses with the name of Westville. Respondent further alleges that a consumer is not likely to automatically associate the name “Westville” with Complainant. Complainant offers no evidence of similarity of the Disputed Domain Name and its WESTVILLE Mark other than the fact that the word “Westville” is contained.
Respondent agrees with Complainant that the date of legal effect of the Disputed Domain Name is 1998. Respondent denies receiving any correspondence or communication from Complainant regarding possible acquisition of the Disputed Domain Name. Respondent asserts that there was no receipt of any offer of purchase for the Disputed Domain Name by Respondent. Respondent further asserts that he has no knowledge of Complainant attempting to contact him for use of this Disputed Domain Name until receipt of this suit. Respondent further asserts that the Disputed Domain Name has lain “dormant” as far as pointing to a specific business. Respondent states that the Disputed Domain Name has been in continuous use for the past 20 years as the email address of Respondent as well as other employees and associates. The Disputed Domain Name was initially created to be used in relation to Westville Motor Sports and is currently used by Westville Remarketing, both are motor vehicle sale related companies.
Respondent denies the allegation that he is maintaining the Disputed Domain Name to gain profit from its sale or transfer, as he has no desire to sell or transfer the Disputed Domain Name. Additionally, Respondent notes that the Disputed Domain Name was created 20 years ago and it was not until some 5 years later that Complainant created its current business. Respondent argues that there was no bad faith intent to gain profit from Complainant by creating and holding the Disputed Domain Name, as Complainant was not even in business at the time the Disputed Domain Name was established.
Respondent contends that he has rights and legitimate interests in the Disputed Domain Name, because he, his employees and associates, are known by their email addresses under the Disputed Domain Name and have been using the Disputed Domain Name for email continuously for the past 20 years.
Respondent further contends that he continues to use the Disputed Domain Name for purposes of his email account, as well as the email account for other employees and associates. Respondent further contends that the original intent for the Disputed Domain Name was for the company Westville Motor Sports, that was located in a small geographical locale known as Westville. Now the Disputed Domain Name is used in conjunction with Westville Remarketing. Respondent argues that neither Westville Motor Sports nor Westville Remarketing is in competition with Complainant who is in the catering and restaurant business, as both Westville Motor Sports and Westville Remarketing were established for the sale of motor vehicles. Thus, Respondent would receive no benefit from attempting to divert consumers of a completely different industry, and would have nothing to gain by a consumer utilizing a food service in New York. Respondent further argues that he derives no gain from the WESTVILLE Mark, as the Disputed Domain Name currently does not direct a consumer anywhere at all.
Respondent denies that he registered the Disputed Domain Name in bad faith or is it being used in bad faith. Respondent proclaims that he has no desire to sell or transfer the Disputed Domain Name. Respondent had no desire to disrupt Complainant’s business because it did not even exist.
Respondent argues that Complainant has failed to allege how Respondent’s use of the Disputed Domain Name disrupts its business other that the fact that those who search the name “Westville” on sites such as Grub Hub or Yelp might be confused. Respondent continues that is not the only other website to result from searches such as these, as Westville is considered a geographic indicator, as well as there being multiple businesses across the Internet with the name Westville somewhere in their title.
Respondent continues that he and Complainant hail from different states. Therefore, as it is simple and common to narrow said searches by geographical location. The Disputed Domain Name would not even appear as a result of a local geographical search. Grub Hub is a site specific to finding food in a certain area, as such the Disputed Domain Name would not even appear in said search as it is not registered or doing business in a food related industry.
Respondent continues that it was impossible for Respondent to have obtained the Disputed Domain Name for the purposes of attracting consumers to his site based upon confusion with Complainant’s Mark as Complainant had yet to begin business and would not do so for another 5 years. Any unintentional redirection would not put Respondent in a place of “gain”. Simply because Respondent has renewed the Disputed Domain Name that he has had in continuous use for the past 20 years, and does not wish to sell it, does not mean that he has done anything in bad faith. It simply means that Respondent is lawfully and legitimately fulfilling the requirement of someone who wishes to continue to use the Disputed Domain Name. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a mark in which Complainant has rights; and
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel has not analyzed the requirements of paragraph 4(a)(i) of the Policy, because Complainant has failed to meet its burden under paragraph 4(a)(ii), as discussed below. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant contends that the Disputed Domain Name was in use by a business named “Westville” up until at least September 20, 2008. Complainant further contends that the Disputed Domain Name has not been in any sort of commercial use since as early as March 25, 2009. It has either been parked or not in use in connection with the name “Westville”.
Respondent explains that the Disputed Domain Name was registered in 1998 and has been continuously used since its inception. Respondent states that the Disputed Domain Name has been in continuous use for the past 20 years as the email address of Respondent as well as other employees and associates. The Disputed Domain Name was initially created to be used in relation to Westville Motor Sports and is currently used by Westville Remarketing, both are motor vehicle sale related companies.
The Panel finds that the stated use by Respondent is in connection with a bona fide offering of goods and services. The evidence further satisfies the Panel that Respondent has not abandoned or ceased using the Disputed Domain Name.
Therefore, Respondent has met the elements of paragraph 4(c)(i) of the Policy and has established his rights and legitimate interests in the Disputed Domain Name. Complainant has failed to demonstrate the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Despite the Complainant having failed to meet its burden under paragraph 4(a)(ii) the Panel will briefly analyze the requirements of paragraph 4(a)(iii) of the Policy.
Based on the evidence in this case, Respondent registered the Disputed Domain Name in 1998. Complainant has submitted evidence of registered trademark rights from 2016 and claims unregistered or common law trademark rights since 2003. Since the Disputed Domain Name was registered at least 5 years prior to Complainant’s claimed trademark rights, the Panel finds that Respondent could not have registered the Disputed Domain Name in bad faith. Complainant has submitted no evidence of mature or nascent trademark rights for Respondent to potentially target, disrupt, or otherwise trade-off of at the time of registration.
The Panel has not analyzed the bad faith use requirement of paragraph 4(a)(iii) of the Policy, because Complainant has failed to meet its burden under paragraph 4(a)(iii) regarding bad faith registration, as discussed above.
Accordingly, Complainant has failed to demonstrate the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Richard W. Page
Sole Panelist
Date: August 10, 2018
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