Complainant is Ground Up, Inc. of Naugatuck, Connecticut, United States of America (“U.S.”), represented by O’Shea Getz, PC, United States.
Respondent is DomainM of Potomac, Maryland, United States, represented by Brian H. Leventhal, Attorney at Law, P.C., United States. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2018. On August 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 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 September 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2018. Upon request of Respondent, the due date for Response was automatically extended to October 1, 2018, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center on October 1, 2018.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on October 17, 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
Founded in 1995, Complainant is in the business of retailing automotive parts, manuals, and diagrams. Complaint owns the trademark GROUND UP, which issued by the U.S. Patent & Trademark Office on May 12, 2015 (Registration No. 4,734,998). Since 1992, Complainant has advertised its services in magazines devoted to automobiles such as Hemmings Motor News, Muscle Car Review, Car Craft, and Popular Hot Roding. In addition, since 1995, Complainant has distributed annual catalogs featuring its services and participated in major car shows throughout the U.S. Complainant maintains the website “www.SS”.
Respondent is a buyer and seller of domain names, selling over 1,000 domain names a year through its website “www.domainm”. Respondent registered the disputed domain name on October 27, 2002. The disputed domain name resolves to Respondent’s “www.domainm” website where Respondent has offered it for sale for USD 94,888. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name is confusingly similar to the GROUND UP mark in which Complainant has statutory and common law rights because the disputed domain name incorporates Complainant’s mark in its entirety. Complainant maintains that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has not given Respondent permission to use its mark and, rather than making a bona fide use or preparation to use Respondent seeks to sell the disputed domain name for a sum far exceeding the average price of the domain names recently sold by Respondent. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith because the fact that Complainant’s mark was “well established and had clearly acquired distinctiveness” by the time Respondent registered the disputed domain name raises the inference that Respondent knew of Complainant’s rights at the time of its registration. Complainant also points to Respondent’s intent to sell the disputed domain name for an “exorbitant” price, Respondent’s rejection of Complainant’s previous offers of USD 15,000 and for USD 25,000, previous UDRP decisions against Respondent, and Respondent’s failure to respond to Complainant’s cease and desist letter of September 12, 2017. B. Respondent
Respondent does not dispute that the disputed domain name is confusingly similar to Complainant’s mark. But Respondent contends that is has a legitimate interest in the disputed domain name because Respondent registered the disputed domain name, consisting of a common phrase with a variety of meanings, in good faith and in the ordinary course of its business of buying and selling domain names more than a decade before Complainant registered its mark. Respondent also maintains that it has neither registered nor used the disputed domain name in bad faith. Respondent submits the affidavit of its owner, who attests that he registered the disputed domain name on behalf of his company and that neither he nor anyone in his company was aware of Complainant’s rights in GROUND UP at the time of the registration. Respondent argues that Complainant’s advertising efforts, which were limited to auto enthusiasts, fail to show that Complainant was widely known by the general public in connection with GROUND UP at the time of Respondent’s registration. According to Respondent, it acquired the disputed domain name because of its “generic and descriptive nature” as part of its bona fide business. 6. Discussion and Findings A. Identical or Confusingly Similar
Considering that the disputed domain name incorporates Complaint’s registered trademark in its entirety, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Given the ruling regarding paragraph 4(a)((iii) of the Policy, the Panel does not address paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant has failed to meet its burden of showing bad faith registration and use by a preponderance of the evidence. Although Complainant did not apply for a federal registration of its trademark until 2014, Complainant has made a valiant effort to demonstrate that it was using its GROUND UP mark since 1996, and, in particular, in 2002 when the disputed domain name was registered. Complainant offers evidence that it advertised in several magazines focused on car restoration, such as Hemmings Motor News (“‘The bible’ of the collector-car hobby”), Super Chevy (“The #1 Chevrolet Enthusiast Magazine”) and Muscle Car Enthusiast.
While Complainant’s advertising efforts may have generated some awareness of Complainant’s mark and the associated services in the (relatively narrow) field of car restoration, Complainant has failed to present evidence from which the Panel can infer that Complainant’s mark was known to the general public or, more to the point, Respondent, at the time of registration in 2002. Consequently, there is not enough evidence to support a finding that Respondent was probably aware of Complainant’s rights when it registered the disputed domain name in 2002.
Moreover, Respondent’s owner Michael Mann has submitted a declaration under penalty of perjury that he was unaware of Complainant and its rights when he registered the disputed domain name. He also submits evidence demonstrating that this declaration is plausible. He has declared (with supporting evidence—Google search results and U.S. Trademark Office trademark search reports) that “ground up” is a well-known and commonly used phrase that is not uniquely associated with Complainant’s trademark. He offers evidence that the phrase “ground up” is commonly used in association with coffee and construction (as in “from the ground up”). Consequently, this is not a case where Respondent offers no credible explanation for the registration of the disputed domain name. Because the term “ground up” has a number of meanings and plausible uses unrelated to Complainant’s trademark, the Panel is not willing to find that Respondent was probably aware of or targeted Complainant’s rights when it registered the disputed domain name. For the same reason, there is no basis to find that Respondent’s asking price for the disputed domain name was based on only the value of Complainant’s trademark.
Accordingly, the Panel finds that Complainant has failed to satisfy paragraph 4a(iii) of the Policy. D. Reverse Domain Name Hijacking
Respondent requests that the Panel find RDNH on the basis that Complainant could not have formed a legitimate good faith belief that Respondent registered or used the disputed domain name in bad faith. Complainant has made a colorable, albeit ultimately unsuccessful, claim against Respondent. The Panel declines to find Complainant engaged in RDNH. 7. Decision
For the foregoing reasons, the Complaint is denied.
Lawrence K. Nodine
Sole Panelist
Date: October 31, 2018
Full & Egal Universal Law Academy