Monday , October 18 2021

Alleged Biblical name the subject of #domain dispute :DomainGang

A pharmaceutical company with a trademark for Qentura challenged the ownership of Qentura.com, a domain registered after its filing for a trademark registration.

According to the Complaint, QENTURA was applied for as a trademark with an intent to use clause in June 2019. Meanwhile, Qentura.com was registered in June 2020, while the mark’s eventual registration took place on May 25, 2021.

In the UDRP, the Respondent asserted that “Qentura” is a Biblical name and not a fanciful or arbitrary mark. But a quick search of Biblical resources using the authorized King James version lists the name as “Keturah” or “Cetura” in the Spanish version.

The Greek version that the King James version is based on refers to the name as “Χεττούρα” that phonetically resembles to “Hetura.” In our opinion, the Respondent’s claim of a Biblical reference to Qentura is not substantiated by these Biblical resources.

The sole WIPO panelist, Harrie R. Samaras, did not base her decision on the Complainant’s claims that the Respondent has a history of cybersquatting:

Final decision: transfer the domain Qentura.com to the Complainant.

Dolopain LLC (an Arizona Company) v. T. J. Griffin Sr., Griffin IT Media, inc.
Case No. D2021-1776

1. The Parties

Complainant is Dolopain LLC (an Arizona Company), United States of America (the “United States” or “U.S.”), represented by Brown Patent Law, PLLC, United States.

Respondent is T. J. Griffin Sr., Griffin IT Media, inc., United States, represented by Intellectual Property Consulting, LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <qentura.com> (the “Domain Name”) is registered with eNom, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2021. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also on June 7, 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 June 8, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 16, 2021

The Center verified that the Complaint together with the amended 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 June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response with an automatic four calendar day extension was July 17, 2021. The Response was dated July 17, 2021.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 3, 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 Background

Complainant is a start-up business. On its website at <qentura.io> it states that: “Our sole purpose in this world is to find the safest and most effective non-pharmaceutical products to help you with pain.”

On March 23, 2019, Complainant filed an intent to use application with the U.S. Patent and Trademark Office (the “PTO”) to register QENTURA on the Principal Register for, among other things, nutritional supplements. On June 26, 2019 the PTO issued a notice stating in pertinent part that the Mark was scheduled to be published in the Trademark Official Gazette on July 16, 2019. On September 10, 2019, the PTO issued a Notice of Allowance (“NOA”) noting, among other things, that no opposition was filed when the application was published in the Official Gazette. The NOA provided that the Applicant had six months from the NOA issue date to file either: (1) A Statement of Use (“SOU”), if the applicant is using the mark in commerce (this is required even if the applicant was using the mark at the time of filing the application, if the use basis was not specified originally); or (2) An Extension Request, if the applicant is not yet using the mark in commerce. If an Extension Request is filed, a new request must be filed every six months until the SOU is filed.

On March 10, 2020, Complainant requested an extension of time to file a Statement of Use which was approved on March 12, 2020.

Respondent registered the Domain Name on June 13, 2020. It resolves to a website titled “Domainist® which offers for sale “Vintage Dot-Coms.” When the Domain Name is typed into a search engine, it takes the public to that website whereby another domain name <domainist.com> shows up.

On September 15, 2020, Complainant filed a Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request. Under the “ongoing effort” box of the Petition application Complainant stated: “manufacturing activities; steps to obtain required governmental approval; COVID-19 has prohibited travel to needed areas.” On September 17, 2020, the PTO issued a Notice of Revival. And on October 28, 2020, the PTO granted Complainant’s second request for an extension of time to file a statement of use.

On March 18, 2021, Complainant filed another Petition to Revive Abandoned Application – Failure to File Timely Statement of Use or Extension Request and Trademark/Service Mark Statement of Use. In that Petition, Complainant also provided a date of first use as January 1, 2020 and a date of first use in commerce as March 17, 2021. The specimen of use provided was a screenshot of a webpage offering goods (“Qentura Complete – Nutrition Support for the Complete Spectrum of Pain”) with the Mark on it. The date of access for that webpage is set forth as March 17, 2021. On March 23, 2021, the PTO granted Complainant its third request for an extension of time to file a statement of use.

On May 25, 2021, the PTO issued Complainant a trademark registration on the Principal Register – Reg. No. 6,364,939 – for the QENTURA Mark (or the “Mark”) for nutritional supplements.

In support of their Response here, the principal of Respondent Griffin IT Media, Inc. (“GIT Media”), Respondent T.J. Griffin, Sr., who represents himself to be “responsible for the company’s registration of domain names” submitted a declaration stating in pertinent part:

“4. Prior to registering the Domain Name, I conducted a clearance search of the United States Patent and Trademark Office’s online database to identify any trademark registrations covering or pending registration applications claiming established rights in the Qentura mark. My search revealed no registrations or pending applications claiming established rights for identical or similar marks.

5. The Domain Name was not registered for the purpose of selling, renting, or otherwise transferring the registration to Dolopain LLC or its competitors.

6. The Domain Name was not registered to prevent Dolopain LLC from reflecting a trademark in a corresponding domain name.

7. The Domain Name was not registered in order to disrupt the Dolopain LLC business.

8. Neither GIT Media nor I have used the Domain Name to attract or attempt to attract Internet users by creating confusion with Dolopain LLC’s trademark.”

5. Parties’ Summarized Contentions

A. Complainant

The Domain Name and the Mark are exactly equivalent.

Respondent has no legitimate reason for using the Domain Name except to cybersquat. He bought the Domain Name over a year ago and has not used it. It resolves to a parking website indicating that the Domain Name is for sale. Respondent has a history of cybersquatting and is preventing Complainant from creating a website using the Domain Name that is exactly equivalent to Complainant’s Mark. Respondent is likely to have had, at least, constructive notice, if not actual notice, of the Mark when registering the Domain Name which suggests Respondent acted with opportunistic bad faith in registering the Domain Name to make an illegitimate use of it.

That the Domain Name resolves to an inactive parking website will lead Internet users to believe that Complainant does not have an Internet presence for selling its goods or is out of business.

The word “qentura” has no meaning in any language. Complainant fabricated the word. Therefore, there is no good faith reason for Respondent to acquire the Domain Name except to cybersquat. The primary purpose of Respondent’s acquisition of the Domain Name was to disrupt Complainant’s business. Acquiring a federally allowed trademark as a Domain Name is a bad faith move but it is even more opportunistic to do so when the trademark is clearly unique and has no other meaning besides Complainant’s trademark and Respondent acquired the Domain Name after Complainant filed its application to register the Mark.

B. Respondent

Claimant has a trademark registration for the Mark so Respondent does not dispute the existence of prima facie evidence that Complainant currently has trademark rights in the Mark, despite the lack of any evidence that Complainant has used the Mark other than Complainant’s assertion in its Statement of Use.

Complainant’s assertion that Respondent has “a history of cybersquatting” is supported merely by a list of all federal lawsuits in which Respondent was a party. That list contains only eight lawsuits dating back more than a decade, and there is no indication that the lawsuits even involved cybersquatting claims, much less any indication that Respondent has ever been found liable under the anti-cybersquatting laws. Furthermore, Complainant does not provide any evidence that Respondent is holding the Domain Name for sale. While Complainant made of record a screenshot from a website on which domain names are sold, nothing in that document shows that the Domain Name was being offered for sale. But even if the Panel accepts Complainant’s assertion as true, aggregating and holding domain names for resale can be bona fide and is not per se illegitimate under the Policy. And because there is no evidence that the Mark is famous, Respondent’s passive ownership of the Domain Name cannot constitute bad faith. Finally, while Complainant claims that Qentura “has no meaning in any language” and that Complainant “fabricated” the term, a search on the Google search engine revels that “Qentura” is the name of a biblical figure and is still used today as a personal moniker. Because QENTURA is not a fanciful or arbitrary mark and because there is no evidence that Complainant’s use of the Mark had rendered the term distinctive at the time the Domain Name was registered, Respondent has a legitimate interest in the Domain Name.

There is no evidence that Complainant had accrued any rights to the QENTURA Mark at the time that Respondent registered the Domain Name. The only evidence that Claimant ever used the Mark is in Claimant’s Statement of Use, which Respondent provided here to demonstrate that Claimant had no trademark rights at the time they registered the Domain Name. The Statement of Use was filed only after Claimant twice had to petition the PTO to revive its application after it was abandoned.

Complainant bases its bad faith registration argument entirely on the fact that Respondent registered the Domain Name while Complainant’s intent-to-use trademark application was pending, but a pending intent-to-use application does not create trademark rights, nor does it establish that Respondent registered the Domain Name in bad faith. Respondent registered the Domain Name well after the Notice of Allowance issued and after Complainant had already filed one request for extension of time to file a Statement of Use. Moreover, the date of the Domain Name registration does not coincide with any significant dates in the timeline for the intent-to-use application, so there is no indication that Complainant’s intent-to-use application played any role in Respondent’s decision to register the Domain Name. Other than the fact the intent-to-use application was pending at the time of the Domain Name registration, Complainant offers no evidence that the Domain Name was registered in bad faith.

Mr. Griffin filed a Declaration which Respondent rely upon for the statements therein (see above).

6. Discussion and Findings

A. Identical or Confusingly Similar

There is no dispute that Claimant has rights in the QENTURA Mark by virtue of its U.S. Registration No. 6,364,939.

There is also no dispute that the Domain Name <qentura.com> incorporates in its entirety the QENTURA Mark and is identical to it.

Where a domain name incorporates a complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. The use of the generic Top-Level (“gTLD”) “.com” does not impact the assessment whether a domain name is identical or confusingly similar to a trademark. See, Bradford & Bingley Plc v. Registrant [email protected] 987654321, WIPO Case No. D2002-0499.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

Complainant argues that Respondent has no legitimate reason for using the Domain Name (no bona fide offering of goods or services) except to cybersquat, noting that Respondent bought the Domain Name over a year ago and has not used it, and that the Domain Name resolves to a parking website where the Domain Name is for sale. Complainant also maintains that the word “QENTURA” does not have any meaning in the English or any other language and that it fabricated the Mark. Thus, Complainant maintains there was no good faith reason to acquire the Domain Name except to cybersquat. Furthermore, there is no evidence that Complainant authorized Respondent to use the Mark for any purpose including for a Domain Name.

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you 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 (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 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.

Respondent takes issue with Complainant’s argument that they have “a history of cybersquatting” noting that Complainant merely provided a list of federal lawsuits in which Respondent Griffin IT Media, Inc. was a party with no indication they involved cybersquatting claims, much less that Griffin IT Media, Inc. has ever been found liable under the anti-cybersquatting laws. The Panel agrees with Respondent that the list of cases, without more, does not establish Respondent has a history of domain cybersquatting.

Respondent also argues that Complainant does not provide any evidence that Respondent is holding the Domain Name for sale noting that while the screenshot attached to the Amended Complaint is a website on which domain names are sold, nothing in that document shows that the Domain Name at issue here was being offered for sale. The Panel agrees that the screenshot, without more, does not show Respondent is offering the Domain Name for sale, but that argument misses the point. Respondent is making a commercial use of the Domain Name with intent to commercially benefit because the Domain Name resolves to a website called “Domainist” that sells domain names (“Thousands of Vintage Dot-Coms for Sale”). When someone types the Domain Name into a search engine, they are taken to a website that is set up to sell domain names. In fact, Respondent has a domain name for their website – <domainist.com> – yet they are using the Domain Name incorporating Complainant’s registered QENTURA Mark to attract the public to their website. Thus, Respondent’s use is commercial and Respondent is profiting by using the Domain Name to bring members of the public, who are looking for Complainant’s product, to Respondent’s website where another business exists. Similarly, Respondent has not shown that they made a bona fide use of the Domain Name under the Policy.

Finally, Respondent takes issue with Complainant’s claims that QENTURA “has no meaning in any language” and that Complainant “fabricated” the term. In this regard Respondent maintains that a simple search on the Google search engine reveals that “Qentura” is the name of a biblical figure and it is still used today as a personal moniker. And Respondent argues that because the QENTURA Mark is not a fanciful or an arbitrary term and because there is no evidence that Complainant’s use of the Mark had rendered the term distinctive when the Domain Name was registered, Respondent has a legitimate interest in the Domain Name. These arguments do not help Respondent.

As an initial matter, Respondent has failed to adduce any evidence that at any time they (as an individual, business, or other organization) have been commonly known by the Domain Name or that they had any rights to the QENTURA Mark. The only evidence of record shows that Respondent is known by the “Griffin” personal and corporate names. Whether or not Complainant actually originated QENTURA – which the Panel does not have any particular reason to doubt – Respondent has not explained why they would register a Domain Name that: (1) they were not using or had any rights in; (2) is not a common or descriptive word (Respondent’s search shows this and that QENTURA could be considered an arbitrary mark); and they knew or should have known from their “clearance search” Complainant was in the process of registering the Mark on the Principal Register of the PTO.

For all of the aforesaid reasons, Respondent has failed to carry their burden of showing they have rights or legitimate interests in the Domain Name.

The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

“[W]here a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.” See WIPO Jurisprudential Overview 3.8.1. However, as an exception to that general proposition, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Id. at 3.8.2. “Such scenarios include registration of a domain name: . . . . (iv) following the complainant’s filing of a trademark application.” Id. That is the situation here.

As set forth above, Respondent registered the Domain Name on June 13, 2020, which was: (1) after Complainant filed its intent to use application (on March 23, 2019) to register QENTURA on the Principal Register; (2) after the PTO published the Mark in the Official Gazette; (3) after the PTO issued a Notice of Allowance (on September 10, 2019) noting that no one opposed the registration; and (4) and after the PTO approved Complainant’s request for an extension of time to file a Statement of Use on March 12, 2020.

Respondent’s representative states in his Declaration that “[p]rior to registering the Domain Name, I conducted a clearance search of the United States Patent and Trademark Office’s online database to identify any trademark registrations covering or pending registration applications claiming established rights in the Qentura mark. My search revealed no registrations or pending applications claiming established rights for identical or similar marks.” The Respondent’s version of its “clearance search” simply does not match the facts above and seems to have been essentially a search with blinders. The PTO’s database plainly tells a different story than that told by Respondent.

In fact a search of the PTO’s database before registering the Domain Name would have provided Respondent with notice of the above-referenced facts and the realization that Complainant’s application to register the QENTURA Mark had cleared two important hurdles – the PTO approved the registration (pending the filing of a SOU) and no one opposed registration of the Mark. A search of the Official Gazette available to the public would have also provided similar relevant information to Respondent.

Complainant’s application was filed as an intent-to-use application which puts the onus on the applicant to produce evidence of use as required by the PTO. The NOA provided that the Applicant had six months from the NOA issue date to file either: (1) A Statement of Use (“SOU”), if the applicant is using the mark in commerce (this is required even if the applicant was using the mark at the time of filing the application, if the use basis was not specified originally); or (2) An Extension Request, if the applicant is not yet using the mark in commerce. Accordingly, even if an applicant files an intent-to-use application, that doesn’t mean they are not using the mark when they file their application. At the time Respondent registered the Domain Name, they were on notice that Complainant was granted an extension of time to file its SOU. Thus, there was at least some chance that an acceptable proffer of use was forthcoming. Indeed, Complainant ultimately provided the PTO with just that – evidence of its rights in QENTURA that predated the date when Respondent registered the Domain Name on June 13, 2020 – first use was shown to be January 1, 2020.

The selective searching that Respondent performed solely in the PTO database and only looking at particular times, events, and for limited information resulted in an inaccurate picture which does not suffice to show Respondent’s lack of bad faith in registering the Domain Name.

Respondent’s bad faith registration is also evident from the use they have made of the Domain Name. Respondent had actual knowledge that Complainant was on the verge of obtaining a trademark registration for the QENTURA Mark. Indeed, Respondent saw value in registering a domain name using a mark in which they have no rights or legitimate interests to attract the public to a commercial website when they already had a domain name associated with that site reflecting the name of the business – <domainist.com>.

The evidence clearly shows that this is a case where the Respondent’s intent in registering the Domain Name was to unfairly capitalize on Complainant’s nascent trademark rights and, thus, qualifies for bad faith registration. That Respondent is benefitting commercially from the use of the QENTURA Mark is evidence of bad faith use.

The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 Domain Name <qentura.com> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: August 17, 2021

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