Complainant is Larry J. Dunn, United States of America (“United States”), self-represented.
Respondent is John J. Shoenhair, United States, represented by Patterson Thuente Pedersen, P.A., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2020. On April 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2020, 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 April 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2020. The Response was filed with the Center on April 22, 2020. The Center appointed Georges Nahitchevansky as the sole panelist in this matter on April 27, 2020. 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, Larry J. Dunn, is a supplier of textiles, such as bed sheets, to members of the military of the United States and in particular the Navy. Complainant owns a business known as Thirteen Sheets LLC that does business under the assumed name FLEET SHEETS. Complainant uses the name and mark FLEET SHEETS for its products and owns a United States trademark registration for the FLEET SHEETS mark (Registration No. 4,666,461) that issued to registration on January 6, 2015, and claimed a first use date of January 1, 2009. Complainant also owns and uses the domain names Respondent is also a supplier of textiles, such as bed sheets, primarily for members of the United States Navy. Respondent operates a business known as RackSheets.com, LLC and operates a website at Respondent was the former General Manager of Complainant’s company. As some point, at least six years ago, the Parties’ business relationship terminated. Although the Parties’ respective businesses appear to have coexisted peacefully for several years thereafter, more recently Respondent and Complainant have been embroiled in a trademark dispute regarding alleged uses by Complainant of variants of the RACKSHEETS name and mark on Complainant’s website. In late February 2020, Respondent acquired the disputed domain name from a third party in Maine who had at one time used the disputed domain name for a website promoting the sale of custom boat linens under the name FLEET SHEETS. At the time, Respondent entered into a Domain Name & Trademark Purchase Agreement (the “Purchase Agreement”) wherein Respondent acquired for the sum of USD 100 the disputed domain name and – according to that agreement at least – any and all common law trademark rights that the prior owner of the disputed domain name might have in in the names and marks FLEETSHEETS and FLEET SHEETS. At some point in March 2020, Respondent began using the disputed domain name for a website that was critical of Complainant and its business practices. On March 26, 2020, Complainant sent Respondent a demand letter regarding the disputed domain name and on March 30, 2020, Respondent sent Complainant a response rejecting Complainant’s contentions. The disputed domain name currently resolves to a website that is critical of Complainant and its business practices. 5. Parties’ Contentions A. Complainant Complainant asserts that it has rights in the FLEET SHEETS trademark by virtue of Complainant’s 2015 United States trademark registration for the FLEET SHEETS mark and by Complainant’s use of FLEET SHEETS for its business. Complainant contends that the disputed domain name is identical to Complainant’s FLEET SHEETS mark, as it fully and solely consists of the FLEET SHEETS mark. Complainant argues that Respondent does not have a legitimate interest in the disputed domain name as Respondent (i) has no intellectual property rights in the disputed domain name, (ii) is not commonly known by the name and mark FLEET SHEETS, and (iii) is using the disputed domain name to misleadingly redirect web users to Respondent’s website for commercial gain and to tarnish the FLEET SHEETS name and mark. Lastly, Complainant contends that Respondent has registered and using the disputed domain name in bad faith as Respondent, a competitor of Complainant, recently registered the disputed domain name for purposes of preventing Complainant from reflecting the FLEET SHEETS name and mark in a corresponding domain name and to disrupt Complainant’s competing business. B. Respondent Respondent rejects Complainant’s contentions and requests that the Complaint be denied. Respondent argues that the disputed domain name is not identical to Complainant’s FLEET SHEETS mark as Complainant’s mark consists of two words whereas the disputed domain name is a unitary term. In addition, Respondent further maintains that the disputed domain name is not identical to Complainant’s FLEET SHEETS mark because Complainant disclaimed the descriptive word “sheets” in its trademark registration for FLEET SHEETS. Respondent contends that it has legitimate interests in the disputed domain name as Respondent (i) acquired pre-existing common law rights in the FLEET SHEETS mark in connection with bedding products by virtue of the Purchase Agreement, and (ii) is using the disputed domain name for a noncommercial criticism website to provide criticism about Complainant’s business practices as a warning to potential consumers. In a similar manner, Respondent argues that it has not registered or used the disputed domain name in bad faith as Respondent owns prior trademark rights in the FLEET SHEETS name and mark and is using the disputed domain name for a noncommercial criticism website. In particular, Respondent rejects an assertion by Complainant that Respondent is somehow “leveraging the domain name’s search engine optimization (SEO) to misleadingly divert consumers”. Respondent argues that its criticism website has a noncommercial purpose to warn consumers about Complainant’s harmful business practices, contains no commercial activities or links to any other websites, including Respondent’s website, and contains a clear disclaimer that the website is not associated with Complainant. Finally, Respondent maintains that Complainant has acted in bad faith by previously threatening the prior owner of the disputed domain with legal action if the prior owner did not transfer the disputed domain name. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and are being used in bad faith. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Complainant has provided evidence that it owns a trademark registration for the FLEET SHEETS mark in connection with its products. With Complainant’s rights in the FLEET SHEETS mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold. In the instant proceeding, the disputed domain name is identical to Complainant’s FLEET SHEETS mark as it fully and solely consists of the FLEET SHEETS mark with the generic Top-Level Domain “.com”, which is irrelevant for purposes of such comparison. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s FLEET SHEETS mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Respondent maintains that it has a legitimate interest in the disputed domain name (i) by virtue of the prior common law trademark rights it acquired in the FLEET SHEETS mark in February 2020 through the Purchase Agreement, and (ii) because Respondent is using the disputed domain name for a noncommercial criticism website. In support of its contention that it acquired valid common law rights in the FLEET SHEETS mark through the Purchase Agreement, Respondent has provided a declaration from the prior owner of the disputed domain name in which, inter alia, the prior owner declares to having used the FLEET SHEETS mark with an online business selling bedding products since May 30, 2003. Respondent has also included a WhoIs printout for the disputed domain name that shows the disputed domain name in the name of the prior owner with a “creation date” of May 30, 2003, and printouts from the Wayback Machine at What is lacking in Respondent’s submission, however, is evidence showing use of the disputed domain name prior to January 2009, when Complainant appears to have adopted the FLEET SHEETS mark or any evidence that there was any use of the FLEET SHEETS mark and/or the disputed domain name after 2012. Given Respondent’s submission of undated archival records in support of having acquired common law rights in the FLEET SHEETS mark, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has for the benefit of the Parties reviewed archival records for the disputed domain name that are available through the Wayback Machine at Notably, the archival records only show that there was a website at the disputed domain name featuring the prior owner’s FLEET SHEETS bedding products in March 2010 up through August 2012. The records also show that in 2004 and 2005 there was only a GoDaddy parked page at the disputed domain name and that there was no website at the disputed domain name for several years thereafter. These discrepancies cast some doubts as to the assertions made by the prior owner in her declaration of having registered the disputed domain name in May 2003 and of having an online presence with the disputed domain name starting in May 2003 for her FLEET SHEETS business.1 As Respondent has not submitted any evidence showing use of the FLEET SHEETS mark by the prior owner before 2010 or after 2012, there are serious questions as to what common law rights in FLEET SHEETS Respondent may have acquired and whether the prior owner had any superior rights to convey to Respondent in the FLEET SHEETS mark. It appears from the limited evidence before the Panel that the prior owner did make some use of the disputed domain name for a website promoting bedding products under the FLEET SHEETS mark from 2010 through 2012, and perhaps as early as 2009 given the copyright notice on the website. That use appears to have ceased after 2012 and there is no documentary evidence showing otherwise. It is thus more likely than not that the prior owner’s use of FLEETS SHEETS ended in or around 2012. It is worth nothing that Respondent acquired the disputed domain name and the alleged trademark rights for USD 100, which given the low amount strongly suggests that by 2020 there was no established or legacy business concern using the FLEET SHEETS name or mark being acquired, and that only a domain name was being acquired. To be sure, while the overall burden in this case lies with Complainant, it was incumbent on Respondent to establish with credible evidence the existence of the common law or unregistered rights it claims to have acquired in the FLEET SHEETS name and mark. See generallyWIPO Overview 3.0 at section 1.3. That standard, in the Panel’s view, should be no different from the evidentiary burden that a complainant faces when it claims to own rights in a common law or unregistered mark. Here, Respondent has failed to prove that the prior owner had any valid or subsisting common law rights in the FLEET SHEETS mark that could legitimately be transferred to Respondent after 2012, specifically in 2020. Put another way, while the Purchase Agreement purported to transfer rights in the FLEET SHEETS mark to Respondent, if the rights did not exist after 2012, specifically in 2020, then the transfer was meaningless and of no import. Thus on the evidence before the Panel it does not appear that Respondent has any rights in, let alone superior or prior rights in, the FLEET SHEETS name and mark.2 With regard to Respondent’s use of the disputed domain name for an alleged criticism website, a review of the website shows that it is indeed a website criticizing Complainant’s business practices. The website has no links to Respondent’s website or to any other websites and Respondent does no offer his products or any other products on the website. Thus, on its face, the website at the disputed domain name appears to fall in that category of legitimate criticism websites. But this does not end the analysis. Respondent’s website at the disputed domain name has to be viewed in the context of the Parties’ relationship and dispute. Respondent and Complainant are direct competitors and previously were in business together before their relationship soured in 2014. Respondent has accused Complainant of infringing his RACKSHEETS mark and made a point of such in his submission and in a declaration he filed in support of his contentions. Given the timing of Respondent’s acquisition of the disputed domain name in late February 2020, it appears to the Panel that the purpose of obtaining the disputed domain name was not for the express purpose of creating a website critical of Complainant, but to retaliate against (and in a sense, compete with) Complainant generally, and perhaps in particular for the alleged infringing uses of Respondent’s trademark. Indeed, in Respondent’s response to Complainant’s March 26, 2020 demand letter concerning the disputed domain name, Respondent states as follows: “For the last 6 years, you have done your thing and I have done mine and we both continue to do business. I am very disappointed that Fleet Sheets has decided to cross the line by infringing my RackSheets® Trademark. Is this necessary on the part of Fleet Sheets? Why did you decide to do this? You are forcing me to defend my Trademark in any legal means I can. I do not like this conflict, I did not want this conflict and I did not create this conflict, but I will continue to defend my RackSheets® mark until we resolve this issue.” Viewed in the context of the Parties’ ongoing dispute, the alleged criticism site appears pretextual in nature and meant to harm Complainant’s business in order to gain leverage over Complainant. That this is likely the case is buttressed by the fact that Respondent went out in 2020 and acquired the disputed domain name that is identical to Complainant’s FLEET SHEETS name and mark in order to use it for a website that would be critical of Complainant and that consumers would likely gravitate to if they were searching for Complainant and its products, particularly as the extension “.com” with the FLEET SHEETS marks would most certainly be seen as the likely official site of Complainant. While both under the UDRP and in general trademark law terms there is a zone for legitimate and fair criticism of another it is simply is not legitimate to use a competitor’s trademark for an alleged criticism site in order to retaliate against a claimed wrong and to gain an advantage in a dispute. If he believes he has been wronged by Complainant, Respondent would be better served by pursuing a claim in a court action for alleged trademark infringement and not by opportunistically acquiring the disputed domain name, entirely based on Complainant’s FLEET SHEETS mark, in order to harm Complainant’s business and reputation and to hopefully favorably resolve Respondent’s claims against Complainant. WIPO Overview 3.0 sections 2.5.2 and 2.6. As Complainant has established with sufficient evidence that it owns rights in the FLEET SHEETS mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith In view of Respondent’s actions as noted above, it is not difficult for the Panel to infer that Respondent’s acquisition and use of the disputed domain name, which consists solely of Complainant’s FLEET SHEETS mark, was done in bad faith. Respondent registered the disputed domain name in furtherance of his dispute with Complainant, Respondent’s direct competitor, and to gain an advantage over Complainant. The disputed domain name, which is likely to be viewed by consumers as connected to Complainant, is being used by Respondent to attract and redirect consumers to Respondent’s alleged criticism website, which is clearly meant to harm Complainant’s business and reputation (and not simply to air legitimate criticisms). Although Respondent asserts that his purpose for acquiring the disputed domain name “is to protect potential purchasers of naval bedding from Complainant of his improper business practices” such an assertion appears to be pretextual and commercially driven. It is telling that Respondent, by his own admission, did not pursue this purported concern for six years and only recently did so after the Parties’ dispute appears to have accelerated. In sum, Respondent’s actions were not undertaken on a good faith basis to legitimately provide criticism but to gain an advantage over Complainant by harming Complainant’s business and reputation. Again, it is worth reiterating that Respondent has other avenues that can be pursued to resolve his dispute with Complainant. Doing so by registering and using a disputed domain name that is identical to a competitor’s trademark, and which is likely to mislead consumers, for purposes of retaliating for an alleged wrong and to gain an advantage in a dispute is misguided and simply an act of bad faith, particularly when used with what purports to be a noncommercial criticism website. Accordingly, Complainant prevails under the third element. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Georges Nahitchevansky 1 Although the Whois record provided by Respondent for the disputed domain name shows a creation date for the disputed domain name of May 30, 2003, the WhoIs record provided appears to be a printout from at least 2019. It is not clear to the Panel that the prior owner actually registered and owned the disputed domain name in May 2003. Respondent has not provided any documentary evidence showing that the prior owner was the registrant of the disputed domain name at that time, such as through archival WhoIs record that are available through services such as Domaintools.com. Because registrars often maintain the original “creation date” of a domain name even after a domain name is acquired by another party, a 2019 record showing a creation date of 2003 does not in and of itself prove ownership of the disputed domain name in 2003. 2 The Panel notes that Complainant did not provide evidence showing use of the FLEET SHEETS mark since January 2009 and has only relied on the claimed date of first use in his United States trademark registration for FLEET SHEETS. While such failure to submit such evidence could be fatal under different circumstances, here it is not disputed by Respondent that Complainant has used the FLEET SHEETS mark since 2009, particularly as Respondent notes on his website at “www.racksheets.com” that he was the General Manager of Complainant for five years and there is no disagreement that the Parties’ relationship ended in or about 2014.
Sole Panelist
Date: May 11, 2020
Full & Egal Universal Law Academy