The Complainant is Little Jonesies LLC, United States of America (“United States”), represented by Thorpe North & Western LLP, United States.
The Respondent is David Jones, United States, self-represented.
The disputed domain name <littlejonesies.com> is registered with 1&1 Internet AG (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2019. On April 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 16, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 23, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on April 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2019. The Center received informal email communications from the Respondent on April 30 and May 1, 2019, but the Respondent did not submit any formal Response. Accordingly, the Center notified the Parties on May 16, 2019, that it would proceed to panel appointment.
The Center appointed David H. Bernstein as the sole panelist in this matter on May 24, 2019. 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.
The Complainant’s owner, Kayson Lynn Jones, and the Respondent, David Jones, both share the last name “Jones.”
On January 7, 2016, the Respondent registered the disputed domain name “littlejonesies.com” (the “Disputed Domain Name”). The Respondent has not made use of the Disputed Domain Name.
On May 17, 2017, the Complainant applied to register the “Little Jonesies” mark (the “Mark”) with the United States Patent and Trademark Office (“USPTO”) for use in connection with “[o]n-line retail store services featuring screen printed clothing”. The USPTO issued that registration on March 13, 2018.
On November 7, 2017, the Complainant applied to register the Mark with the USPTO for use in connection with “[c]lothing, namely T-shirts, hats, sweatshirts, hoodies, beanies”. The USPTO issued that registration on June 12, 2018.
Both of the Complainant’s registrations claim first use as of January 1, 2014, and first use in commerce as of January 1, 2015.
The Complainant states that it is the owner of federally registered trademarks covering “Little Jonesies” and has “significant” common law trademark rights in the Mark. The Complainant states that it has continuously used the Mark publicly in connection with the sale of screen printed women and children’s clothing since January 1, 2015. The Complainant asserts that its clothing is sold on five different online platforms, including its website “littlejonesiesco.com”, amassing over 20,000 sales.
The Complainant alleges that the Disputed Domain Name is identical to the Mark because it wholly encompasses the Mark.
The Complainant argues that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant states that it never authorized, consented to, or licensed the use of the Mark by the Respondent, and that the Respondent has not been previously known by the Disputed Domain Name. The Complainant states that is has not been able to locate any evidence of the Respondent’s legitimate commercial or noncommercial interest in the Disputed Domain Name, and contends that the Respondent has never used the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant points to the error message on the webpage to which the Disputed Domain Name resolves and the lack of archived hits for any website connected to the Disputed Domain Name.
Finally, the Complainant avers that the Respondent registered and is using the Disputed Domain Name in bad faith to prevent the Complainant from using its trademark in a domain name. The Complainant asserts that the lack of evidence of the Respondent’s use of the Disputed Domain Name supports a finding of bad faith.
The Respondent did not formally reply to the Complainant’s contentions. However, in email communications with the Center, the Respondent and his wife (Lisa Jones) aver that they were not aware of the Mark and registered the Disputed Domain Name in anticipation of starting a business.
Under paragraph 4(a) of the Policy, a complainant must prove by a preponderance of the evidence:
(i) that the domain name is identical or confusingly similar to a trademark or trade service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the respondent registered and is using the domain name in bad faith.
Because the Respondent failed to respond to the Complaint, the Panel may treat as uncontested the Complainant’s factual assertions. The Panel, however, need not accept conclusory allegations, especially those that appear counter-factual based on the record.
The Disputed Domain Name incorporates in its entirety the Complainant’s registered trademark. As such, the Disputed Domain Name is clearly identical to those trademarks for purposes of the Policy, and the requirements of paragraph 4(a)(i) have been met.
The Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Name because (i) the Complainant never authorized, consented to, or licensed the Respondent to use the Mark, (ii) the Respondent has never used the Mark, and (iii) the Respondent has not been previously known by the Disputed Domain Name.
Normally, these assertions would establish a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 2.1. This case, though, presents a fact that complicates the allegations required in order for the Complainant to establish a prima facie case: the Complaint, on its face, discloses that the Respondent’s last name is Jones. Because the Respondent’s last name is “Jones”, which corresponds to the Disputed Domain Name, the Complainant should have addressed this fact in its Complaint. Instead, the Complainant entirely ignores this fact.
In the light of that fact, the Complainant’s conclusory statement that the Respondent is not known by the Disputed Domain Name cannot be accepted. At the minimum, with knowledge of this fact, the Complainant should have undertaken some due diligence in order to ensure that it could truthfully aver that the Respondent is not known by the Disputed Domain Name. The Complainant might have conducted an investigation, or might have contacted the Respondent to discuss why the Respondent registered the Disputed Domain Name and whether the Respondent was using “Little Jonesies” in some way.
As the Complainant describes in the Amended Complaint, the Complainant did take some steps to assess whether the Respondent was using the Disputed Domain Name online:
“[a] Google search for ‘Little Jonesies’ adjacent to one another and without any further modifiers does not result in any hits identifying any commercial entity other than the Complainant. The only hit for Little Jonesies adjacent to one another with a modifier is ‘Little Jonesie’s Rug Man’ a flooring contractor in Danville, New Hampshire. This hit hyphenates and separates the ‘s’ apart from Jonesie and includes the additional terms, Rug Man. There is no evidence of any entity other than the Complainant being known by Little Jonesies without any further modifiers.
Further, there is no evidence that Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. As previously asserted there is no evidence of current or historic use of the Domain Name. Accordingly, there is no evidence presently available of a legitimate noncommercial or fair use of the Domain Name.”
These allegations are sufficient to show that the Respondent appears not to be using the Little Jonesies name online. But it does not address the question of whether the Respondent may be known by, or is using, “Little Jonesies” offline. And the steps the Complainant describes do not support the blanket assertion that “[t]here is . . . no indication that Respondent has been previously known by the Domain Name.”
It may be that the Respondent, despite have the last name “Jones,” is not commonly known as “Little Jonesies”; it is equally unclear whether the Respondent has made preparation towards his claimed business. But, it is not enough for the Complainant to simply speculate; if the Complainant is going to allege that as a fact, the Complainant needs to explain to the Panel what investigation it undertook to confirm that fact and needs to show that the investigation was adequate to support the conclusion. The online searching that the Complainant says it did is not sufficient.
Although it is a close question, on the specific facts of this case, the Panel concludes that the Complainant has not satisfied the requirements of paragraph 4(a)(ii); at the same time, the Panel notes that the Respondent has not provided any evidence of his planned business.
Paragraph 4(b) of the Policy provides four non-exclusive circumstances that, if found present by the Panel, are evidence of bad faith registration and use of a domain name:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The Complainant rests its argument for bad faith, in part, on paragraph (ii) of the Policy. The Complainant argues that the Respondent registered the Disputed Domain Name in bad faith to prevent the Complainant from using its trademark in a domain name. But the Complainant has completely ignored the second part of the paragraph. There is no evidence whatsoever that the Respondent has engaged in a pattern of registering domain names to prevent trademark owners from reflecting their marks in corresponding domain names. The Complainant notes that <littlejonesies.net> and <littlejonesies.org> are both registered as well and are registered behind a privacy shield, but Complainant submits no evidence whatsoever that these domain names are registered by Respondent; moreover, at the time of drafting this decision, both appear to no longer be registered.
The Complainant also relies on the Respondent’s non-use of the Disputed Domain Name to support a finding of bad faith. But passive holding can only support a finding of bad faith in circumstances where it is reasonable to find that a respondent must have been aware of the complainant’s mark and registered the domain name in order to take advantage of the trademark value of the domain name. Here, although the Complainant may well have built a successful business, there is no evidence that the Complainant’s business was sufficiently well known at the time the Respondent registered the Disputed Domain Name such that the Respondent likely registered the Disputed Domain Name in bad faith. The Complainant had been in business for only 16 months at that time and had not yet applied to register its mark with the USPTO. The Complainant has not submitted any evidence of its sales in that period (it only has submitted evidence of its cumulative sales from inception to the date of the Complaint), of any unsolicited media attention it obtained in that period, or any other evidence that could support a finding that the Respondent likely was aware of and was targeting the Complainant’s mark when it registered the Disputed Domain Name. See e.g.section 1.3 of the WIPO Overview 3.0.
The argument for bad faith also fails under the remaining paragraphs (i), (iii), or (iv). The Complainant does not argue or establish that the Respondent has registered the Disputed Domain Name primarily to disrupt the Complainant’s business or to attract, for commercial gain, Internet users. In fact, the Disputed Domain Name leads to a web site displaying an error message, without redirecting the user to another site or location. There also is no evidence (and the Complainant does not allege that there is) that the Respondent has ever attempted to sell, rent, or otherwise transfer the Disputed Domain Name to the Complainant. Although the Respondent, in its email response to the Complaint, indicated that it could be willing to sell the Disputed Domain Name to the Complainant (asking: “[i]s there someone interested in purchasing the domain from us”), that offer is not evidence of bad faith if the Respondent has a legitimate interest in the Disputed Domain Name.
The Panel finds that the Disputed Domain Name has not been registered in bad faith in terms of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
David H. Bernstein
Date: June 7, 2019
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