Complainant is Walking Forward Together, Inc. of Lancaster, Pennsylvania, United States of America (“United States”), represented by Scott F. Landis, United States.
Respondent is Michael Casey of Fort Lauderdale, Florida, United States, of United States of America, 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 July 26, 2018. On July 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 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 August 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2018. The Response was filed with the Center on August 28, 2018.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on September 7, 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 Pennsylvania-based organization providing charitable services to families suffering from the pre-natal or neo-natal loss of a child. Complainant, operating under the name Walking Forward Together, has offered its services since March 29, 2017. Complainant owns the domain names and , which it registered on June 4, 2018. On July 5, 2018, Complainant filed the currently pending United States trademark applications for WALKING FORWARD TOGETHER (Serial Nos. 88026954 and 88026791) and VENI VIDI AMAVI WALKING FORWARD TOGETHER (Serial No. 88026918) (collectively the “Marks”).
Respondent is a Florida resident and the registered owner of the disputed domain name . The disputed domain name was registered on May 30, 2017, and currently resolves to a website for an organization identified as “Walking Forward Together – onward & upward, together” that features blog posts “venting” about the current political climate. The earliest post on the website is dated June 21, 2018, and the latest is dated July 28, 2018. 5. Parties’ Contentions A. Complainant
Complainant asserts rights in the Marks under common law and by virtue of its trademark applications. According to Complainant, the disputed domain name is identical to its WALKING FORWARD TOGETHER mark as it is completely reproduces the mark. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name and registered and is using the disputed domain name in bad faith because the website to which the disputed domain name resolves is not that of a legitimate organization and was created to thwart Complainant’s attempts to recover the disputed domain name. According to Complainant, a volunteer working for Complainant was to originally register the disputed domain name on Complainant’s behalf. Instead, Complainant posits, the volunteer either registered the disputed domain name in Respondent’s name or in his own name and later transferred it to Respondent. Following a disagreement, Complainant maintains, the now former volunteer, in association with Respondent, retained the disputed domain name for the purposes of disrupting Complainant’s mission and for extorting Complainant. According to Complainant, the former volunteer has offered to sell the disputed domain name to Complainant on multiple occasions and despite Complainant’s requests, Respondent has failed to transfer the disputed domain name. B. Respondent
Respondent maintains that he is an innocent purchaser of the disputed domain name. According to Respondent, he was unaware of Complainant and any controversy surrounding the disputed domain name until the Center notified Respondent of this Complainant. Respondent argues that Complainant lacks standing because it has not yet obtained trademark registration for the Marks. Respondent further notes that his purchase of the disputed domain name, on June 30, 2018, predates Complainant’s July 5, 2018, trademark applications. Respondent argues that he is making a legitimate, noncommercial use of the disputed domain name as it resolves to a blog intended to be a “community opinion forum, an organization to create intelligent solidarity and discussion” and serves as a forum for “venting, for cataloguing the daily injustices we endure under the worst president in history”. Even the logo, which features a bold “W”, represents the concept of walking forward together, according to Respondent. Further, Respondent contends that Complainant has failed to carry its burden to show bad faith registration and use as it has failed to provide any evidence of bad faith. 6. Discussion and Findings A. Identical or Confusingly Similar
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that it has trademark rights. Here, Complainant relies on its pending trademark applications and common law rights. This reliance here, however is unavailing. A pending application does not by itself establish rights within the meaning of the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.4; Jetgo Australia Holdings Pty Limited v. Name Administration Inc. (BVI),WIPO Case No. D2013-1339 (“[T]he Panel is inclined to the view that an accepted trademark application that has not yet proceeded to grant does not give rise to trademark rights for the purposes of the Policy.”).
Complainant also asserts common law rights in the Marks. To establish common law rights, however, “the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services”. WIPO Overview 3.0, section 1.3. Complainant’s conclusory assertion of common law rights does not suffice. In the absence of a trademark registration, Complainant must submit sufficient evidence to support its allegations of common law use. Complainant has submitted no such evidence.
Even assuming, however, that Complainant has established rights in the Marks (e.g., based on use, or its trademark maturing to registration), Complainant has failed to submit evidence sufficient to satisfy the requirements of paragraph 4(a)(i) of the Policy for the reasons detailed below. B. Rights or Legitimate Interests
The Panel need not address paragraph 4(a)(ii) of the Policy given Complainant’s failure under the third element. C. Registered and Used in Bad Faith
Complainant has also failed to establish bad faith registration.
There is no evidence that Respondent registered the domain name in bad faith. Complainant alleges that it began use of the phrase “Walking Forward Together” March 29, 2017. The disputed domain name was registered on May 30, 2017. There is no evidence that Mr. Metzger, the volunteer whom Complainant alleges registered the domain name, was aware of Complainant’s trademark rights as of May 30, even assuming that Complainant had acquired rights by that date. Indeed, there is no evidence in the record of the nature of Complainant’s use of “Walking Forward Together” as of that date. There is therefore no basis for concluding that the initial registrant registered in bad faith.
Respondent did not himself register the disputed domain name. In his response Registrant says he purchased the disputed domain name on June 30, 2018, several days before Complainant filed its trademark registration application. If Respondent acquired the disputed domain name in bad faith, this may be considered bad faith registration. WIPO Overview 3.0, section 3.8.1; Pinterest, Inc. v. P c/o Whois Privacy Services Pty Ltd / Ian Townsend,WIPO Case No. D2015-1873 (
; transfer: “[W]here a domain name has been transferred between unrelated registrants after its creation date, as is alleged here. In such a circumstance, UDRP panels typically assess the registration in bad faith requirement as at the date when the respondent took possession of the disputed domain name and not at its original creation date.”) Even so, Respondent says he had no knowledge of Complainant when he purchased the disputed domain name and Complainant has offered no evidence to the contrary. Given that the purchase occurred before Complainant applied to register its Marks, and in the absence of any evidence that Complainant has a sufficiently well-known mark (e.g., by virtue of use in commerce) such that Respondent can reasonably be said to have known of the Marks, there is no basis for inferring bad faith on Respondent’s part.
Accordingly, the Panel finds that Complainant has failed to submit sufficient evidence to satisfy paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
The Panel expresses no opinion regarding whether Complainant may file another petition that includes evidence sufficient to satisfy its burdens with respect to the disputed domain name.
Lawrence K. Nodine
Sole Panelist
Date: September 21, 2018
Full & Egal Universal Law Academy