Complainant is GIVN Goods, Inc., United States of America (“United States”), represented by Gearhart Law, United States.
Respondent is Domain Administrator, Tiburon Holdings, Inc., United States, represented by Pillsbury Winthrop Shaw Pittman LLP, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 22, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 22, 2021.
The Center verified that the Complaint together with the amendment to 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 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2021. The Response was filed with the Center on September 13, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 20. 2021. 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 BackgroundComplainant sells bottled water under the GIVN trademark, and has done so since April 9, 2014. The GIVN mark has been registered with the United States Patent and Trademark Office (“USPTO”) since August 26, 2014 under USPTO Reg. No. 4,594,320.
Complainant operates a commercial website at “www.givnwater.com”.
According to Complainant, its GIVN trademark is “famous.” Complainant alleges that it has “thousands of clients across the United States.” Apart from that statement, there is no indication in the record about the magnitude of Complainant’s sales, its advertising expenses, the extent of consumer recognition of the GIVN mark, the existence or magnitude of Complainant’s social media footprint and following, or unsolicited media coverage of Complainant and its GIVN product.
The Domain Name was registered by Respondent on May 20, 2021. For a time, the Domain Name resolved to a landing page indicating that it might be for sale. Currently, the Domain Name does not resolve to an active website.
Respondent introduced evidence that the Domain Name had previously been owned and used, likely by multiple third parties, as early as 1999.
Complainant alleges that it engaged the domain monitoring services of GoDaddy in April 2021 with respect to the Domain Name. It appears that the status of the Domain Name registration changed twice in April and May 2021.
Respondent asserts that it bought the Domain Name with the highest (undisclosed) bid at a public auction on May 20, 2021.
On May 2021, an individual (“MT”) sent an email to Complainant asking whether Complainant was interested in purchasing the Domain Name for USD 4,500. Complainant promptly countered with an offer of USD 2,000. Complainant followed up with MT, and even increased the offer to USD 3,500, but Complainant did not hear back from MT until June 9, 2021, when MT sent an email stating that he had been mistaken in his belief that he still owned the Domain Name. Respondent states that it has no relationship or affiliation with MT, and there is nothing in the record contrary to Respondent’s disavowal of MT.
Although not disclosed in the Complaint, Respondent asserts that, on July 28, 2021, Complainant made contact with Respondent to ask about buying the Domain Name. According to Respondent (there are no annexes to the Response to corroborate this account), Respondent responded that it was willing to consider an offer. Complainant offered USD 1,500 for the Domain Name. Respondent declined. Complainant asked what price would Respondent accept, and Respondent replied with a list of comparable domain names and the amounts for which they were sold, but quoted no specific price for the Domain Name.
5. Parties’ Contentions A. ComplainantComplainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Name.
B. RespondentRespondent asserts that it acquired the Domain Name legitimately via public auction and with no knowledge of Complainant or its GIVN trademark. Rather, Respondent asserts, the Domain Name was registered because “givn” is an abbreviation of a common word (“given”) and the Domain Name has inherent value as a short, four-letter Domain Name.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel concludes that Complainant has rights in the trademark GIVN through registration demonstrated in the record. The Panel also concludes that the Domain Name is identical to that mark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the 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 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.
The Panel need not consider this UDRP element, given its holding below on the “bad faith” element.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Complainant has failed to prove that Respondent has registered and used the Domain Name in bad faith. Based on the rather thin record here, and viewing the matter on a balance of probabilities, the Panel cannot conclude that it is more likely than not that Respondent had Complainant’s GIVN trademark in mind when registering the Domain Name.
As Respondent notes in the Response, it acquired the Domain Name because it is short and represents an abbreviation of a common word. The Panel agrees that the Domain Name – particularly with the “.com” generic Top-Level Domain – may be inherently valuable notwithstanding anyone’s trademark rights. Respondent’s statement that it was unaware of Complainant and the GIVN mark at the time the Domain Name was registered strikes the Panel as plausible.
In addition, the Panel notes that evidence that Complainant’s trademark, albeit registered, enjoys any renown is altogether lacking in this record. Complainant asserts that its mark has become “famous,” but that conclusion simply cannot be accepted on the strength of the evidence presented.
In short, the Panel cannot reasonably find that Respondent targeted Complainant’s GIVN trademark. Absent such a finding, there can be no bad faith registration, and hence the Complaint must fail.
Complainant has not established Policy paragraph 4(a)(iii).
D. Reverse Domain Name HijackingRespondent asks the Panel to find that this Complaint was brought in bad faith and constitutes Reverse Domain Name Hijacking (“RDNH”). The Panel declines to find RDNH here. Complainant’s case is weak, and Complainant’s claim that the GIVN mark is “famous” is not supported by any evidence (apart from the unhelpful statement that a vendor of bottled water has “thousands of clients” in 2021). Despite the weakness of Complainant’s case and its presentation, the Panel sees no clear evidence that this Complaint was brought in bad faith.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: September 29, 2021