WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Goodr LLC v. Michael Rader, Brandroot
Case No. D2018-1171
1. The Parties
Complainant is Goodr LLC of Playa Del Rey, California, United States of America ("United States"), represented by Dorsey & Whitney LLP, United States.
Respondent is Michael Rader, Brandroot of Kailua Kona, Hawaii, United States, represented by Rodenbaugh Law, United States.
2. The Domain Name and Registrar
The disputed domain name <goodr.com> is registered with Go Australia Domains, LLC (the "Registrar")
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 25, 2018. On May 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 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 May 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2018. Upon request of Respondent, the due date for Response was extended to July 23, 2018, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center July 23, 2018.
The Center appointed Georges Nahitchevansky, William F. Hamilton, and John Swinson as panelists in this matter on July 20, 2018. The Panel finds that it was properly constituted. Each member of 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, Goodr LLC, is a California-based running brand founded on March 4, 2015. Complainant primarily sells sunglasses and apparel under the name and mark GOODR. Complainant's products are sold throughout the United States and in 12 other countries in the world. On October 25, 2015, Complainant filed a federal trademark application in the United States for the mark GOODR in connection with Complainant's sunglasses and apparel products. That application matured to registration on June 14, 2016 (Registration No. 4,977,666). Complainant also owns and uses the domain names <playgoodr.com> and <sellgoodr.com> to promote and advertise its business and products.
Respondent, Brandroot, is a Hawaii-based limited liability company founded by Michael Rader on or about March 29, 2015. Respondent operates an online marketplace at <brandroot.com> which offers for sale domain names under the ".com" generic Top-Level Domain ("gTLD") extension as part of an entire online and marketing identity offering for small businesses and startups.
The disputed domain name was originally registered in October 16, 2009. The registration of the disputed domain name expired in 2017 and the disputed domain name was then put up for sale through an online auction facilitated by GoDaddy.com. Complainant and Respondent both participated in the auction, and on November 20, 2017 Respondent acquired the disputed domain name with a winning bid of USD 1,358.
At some point after acquiring the disputed domain name, Respondent developed and set up a website at the disputed domain name that offered the domain name for sale as part of a proposed online and marketing identity for USD 9,495. On or about February 14, 2018, a representative of Complainant contacted Respondent about the disputed domain name, noting Complainant's rights in the GOODR mark, and inquiring about the possibility of buying the disputed domain name for a reasonable sum. The parties had subsequent communications and Complainant's representative offered to purchase the disputed domain name for USD 4,000. Ultimately, the Parties did not come to an agreement and Complainant then filed the instant UDRP Complaint.
5. Parties' Contentions
Complainant asserts that it adopted the GOODR mark in March 2015 for use in connection with Complainant's sunglasses and apparel products. Complainant maintains that it adopted the GOODR name and mark for its highly distinctive nature as a fanciful term that has no dictionary definition. Complainant further maintains that it has extensively promoted Complainant's products sold under the GOODR mark, that Complainant's GOODR products are sold through hundreds of outlets throughout the United States and that Complainant's GOODR products have won a number of awards and have been featured in numerous prominent publications.
Complainant argues that the disputed domain name is confusingly similar to Complainant's GOODR mark as it consists of the GOODR mark in its entirety.
Complainant asserts that Respondent lacks any rights or legitimate interests in the disputed domain name because Respondent (a) is not a franchisee, licensee or otherwise affiliated with or authorized by Complainant to register the disputed domain name or to use the GOODR mark, (b) is not commonly known by the disputed domain name, and (c) has only used the disputed domain name with a web page that offers the disputed domain name for sale and which also links back to Respondent's website at <brandroot.com>. Complainant contends that Respondent has not used the disputed domain name for any bona fide offering of goods and services and has simply acquired the disputed domain name for the purpose of selling it for an amount (USD 9,495) far in excess of the cost Respondent paid to acquire the disputed domain name (USD 1,358). Complainant argues that because the GOODR mark is fanciful and does not have any inherent descriptive value outside of the goodwill generated by Complainant through Complainant's continuous use of the GOODR mark, Respondent cannot have a legitimate interest in the disputed domain name.
Finally, Complainant asserts that Respondent has acted in bad faith because Respondent has essentially prevented Complainant from registering the disputed domain name that consists of Complainant's exact GOODR mark. In that regard, Complainant argues that GOODR is a fanciful word not appearing in the dictionary and therefore derives value from the goodwill generated by Complainant rather than any claimed generic quality. Complainant further argues that Respondent knew or should have known of Complainant's rights in the GOODR mark, as a cursory search by Respondent would have revealed Complainant's use and registration of the GOODR mark. Complainant contends that because Respondent is a professional "domainer," Respondent had an obligation to make reasonable efforts in its due diligence prior to registering the disputed domain name. Lastly, Complainant argues that Respondent has sought to capitalize on the goodwill associated with the GOODR mark by offering the disputed domain name for sale at a price that is seven times more than the amount paid by Respondent at auction for the disputed domain name. Complainant maintains that Respondent's business and pricing models show a clear pattern of bad faith registration and use of domain names, given that Respondent has registered large numbers of domain names with no regard as to whether those domain names are identical to an established trademark, and given that Respondent has offered to sell other domain names that are four letters in length, notably including one that correlates to a registered trademark, at a significantly higher price than other domain names that are owned by Respondent that are four letters in length.
Respondent maintains that it was established in 2010 and that it is an online marketplace that helps small businesses and startups to find and build their brands and to immediately establish an online marketing presence by purchasing a brand name, a corresponding ".com" domain name and an individually designed logo.
Respondent argues that it acquired the disputed domain name, which is a valuable five-letter domain, because of the generic and/or common usage of the term "goodr" as a descriptive term or as a surname. Respondent notes that the term "goodr" is a play on, reference to, and/or abbreviation of "gooder" and "do-gooder." Respondent maintains that after acquiring the disputed domain name at auction, Respondent developed an individually branded portfolio for the Goodr name that included the disputed domain name. Respondent then developed and posted a website at the disputed domain name that (i) describes the appeal of the Goodr name based on its aural and visual characteristics, (ii) displays a proposed logo for "goodr," (iii) ranks the name according to Respondent's comprehensive branding scale and (iv) includes an option to purchase. Respondent contends that it has developed and sold many other similar portfolios of descriptive terms that drop vowels, including <buyr.com>, <hotgrl.com>, <leadrs.com>, and <shootrs.com>.
Respondent does not dispute that the disputed domain name is confusingly similar to Complainant's GOODR mark, but vehemently disputes that the GOODR mark is "highly distinctive" and/or "fanciful."
Respondent asserts that it has a legitimate interest in the disputed domain name as it made clear use of the disputed domain name before having any notice of Complainant's rights when it purchased the disputed domain name. In support of that contention, Respondent submits a sworn declaration from its Chief Executive Officer that when Respondent purchased the disputed domain name on November 20, 2017 it was unaware of Complainant's rights in the GOODR mark. Respondent further asserts that the term "goodr" is not a fanciful term, as Complainant argues, but a play on the descriptive term "gooder" that is commonly used in popular culture in the descriptive and/or generic sense to refer to good deeds, acts of kindness or the quest of personal improvement. Respondent also notes that other parties use the term "goodr" for goods and services unrelated to Complainant. As such, Respondent contends that because it registered the disputed domain name on account of its descriptive value, and there is no evidence to indicate that Respondent was aware of and/or registered the disputed domain name to take advantage of Complainant's rights in the GOODR mark, Respondent has a legitimate interest in the disputed domain name. In addition, Respondent argues that because it is in the business of building brand asset packages that can be purchased by new businesses (and has developed and sold many such packages in the past) the creation of a similar brand asset package with the disputed domain name demonstrates a bona fide use of the disputed domain name conferring rights and a legitimate interest therein.
Respondent contends that it has not registered and used the disputed domain name in bad faith. Respondent argues that there is no evidence that Respondent registered the disputed domain name in bad faith, given (i) the descriptive and common meaning of "goodr," (ii) Respondent's lack of awareness of Complainant's rights in GOODR at the time Respondent acquired the disputed domain name, and (iii) the lack of evidence that Respondent registered the disputed domain name to trade off of Complainant's alleged goodwill in its GOODR mark. Respondent asserts that there is no evidence that Respondent intentionally prevented Complainant, or any other potential user, from reflecting its trademark in a domain name.
Lastly, Respondent asserts that Complainant's claim that Respondent has a pattern of conduct of preventing trademark holders from registering domain names based on their trademarks is baseless. Respondent reiterates that it has been in the business of selling brand portfolios, which include a corresponding ".com" domain name since 2010, and that Respondent has never received a single complaint concerning its activities. Respondent further asserts that its offer to sell the disputed domain name at slightly higher price than some of the other domain names Respondent owns is easily attributable to the fact that "goodr" corresponds to a common term, which makes it inherently valuable to third parties. Respondent also notes that its pricing of the disputed domain name for USD 9,495 is consistent with sales made by Respondent of other domain names that were based on descriptive and common terms and is in line with Complainant' s own actions of offering to purchase the disputed domain name for USD 4,000.
Based on the foregoing, Respondent argues that there is no basis for Complainant's claims and requests that the Panel make a finding that Complainant has engaged in reverse domain name hijacking.
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 is 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 section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Complainant has provided evidence that it owns trademark registrations for the GOODR mark in connection with its sunglasses and apparel products.
With Complainant's rights in the GOODR 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 UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, for purposes of the first element the disputed domain name is confusingly similar to Complainant's GOODR mark as it consists of the GOODR mark in its entirety. The addition of the gTLD extension ".com" does not distinguish the disputed domain name from Complainant's GOODR mark, as the dominant component of the disputed domain name is GOODR. WIPO Overview 3.0, sections 1.7 and 1.8. 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 GOODR 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.
In assessing whether a respondent has rights or legitimate interests is a disputed domain name, the relevant time for the assessment is the date of the filing of the complaint. See WIPO Overview 3.0 at section 2.11. In this matter, Respondent has an established online business which offers for sale domain names under the ".com" gTLD as part of an entire online and marketing brand identity offering for small businesses and startups. Respondent maintains that its acquisition of the disputed domain name was done in furtherance of that business purpose. While the Panel notes that Respondent's business, as presented, appears legitimate, the issue before the Panel turns on the disputed domain name and whether Respondent has rights or a legitimate interest in the disputed domain name per se.
Respondent maintains that it has a legitimate interest in the disputed domain name because it registered the disputed domain name on account of its descriptive value. In the Panel's view, whether the term "goodr" is a descriptive term is questionable. The term "goodr" does not appear in the dictionary, and the term "gooder", which Respondent asserts "goodr" plays upon, is likewise not a dictionary term. That being said, Respondent has provided some evidence that (i) the term "gooder" (with an "e") is a surname (albeit one that seems from Respondent's evidence to be fairly rare), (ii) the term "do-gooder" has a dictionary meaning, (iii) there are some third party uses of the term "gooder" in company names and in social media account names and hashtags, such as "Brewgooder", "Gooder Supply Home Design", and "#BeGooder", and (iv) there is some limited use of "goodr" for a food waste management company and in social media accounts and hashtags. Given the submitted evidence as a whole, while it does not appear that "goodr" is simply a fanciful term per se, as Complainant contends, it likewise does not show that "goodr" is a common descriptive term as Respondent argues. If anything, the term "goodr," which is not a dictionary term, falls somewhere in between the two and likely closer to Complainant's claim that GOODR is distinctive. Indeed, the Panel notes that a Google search submitted by Complainant, which is not contested by Respondent, shows that most of the references to "goodr" in the first three pages of the Google search results specifically refer to Complainant and its GOODR products. Thus it appears that the use of "goodr" enjoys a much broader association with Complainant than with a claimed common or descriptive term that is not found in any dictionary, which would support the notion that "goodr" is more of a distinctive or fanciful term.
But even assuming that "goodr" has some limited descriptive or common use, as Respondent contends, this does not automatically establish that the use of the word by Respondent as part of the disputed domain name corresponds to a legitimate interest or a bona fide offering of goods and services. See, e.g., Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666. The touchstone as to whether there is a legitimate interest in a domain name that consists of a descriptive or common term is whether the use, or demonstrably intended use, of the domain name is in connection with the relied-upon dictionary meaning and not to trade off another party's trademark rights. WIPO Overview 3.0 at section 2.10.
Here, it is questionable whether Respondent's actions have been undertaken to register and use the disputed domain name for an alleged common or descriptive connotation associated with the term "goodr". Although Respondent asserts that it was unaware of Complainant's rights in the GOODR name and mark when it acquired the disputed domain name in November 2017, the evidence before the Panel shows that Respondent registered the disputed domain name and then at some point thereafter attempted to sell the disputed domain name as a premium domain name and as an available brand or business name. As an aside, Respondent appears to offer two categories of domain names at Respondent's website at <brandroot.com>: (i) standard names which tend to be offered at a lower price point and (ii) domain names that Respondent considers to be more premium which generally appear to have higher pricing, such as the disputed domain name.
A review of Respondent's website at the disputed domain name shows that Respondent has promoted the disputed domain name as a premium domain name with a high rank on Respondent's claimed "comprehensive branding scale". Notably, while Respondent claims to have registered the disputed domain name on the basis of its generic or common usage, the website at the disputed domain name makes no use of or reference to "goodr" as a common or descriptive term or that "goodr" is a play on "gooder" or "do‑gooder." Instead, the website refers to the disputed domain name as a "great name," and "a snappy and memorable take on the word 'good'", which in combination could be seen as suggesting that the term "goodr" is essentially distinctive or fanciful and not a common descriptive term as Respondent now argues. Notably, because Respondent has been offering the disputed domain as part of a brand offering with no restrictions, a consumer could mistakenly believe that the "goodr" name is available for use without restriction. Indeed, Respondent's website at <brandroot.com> includes the phone number "1-866-WE-BRAND", specifies that consumers can choose "from thousands of available brand names", and that "names priced over $1500 also come with one year of trademark certification and monitoring". In combination, these types of statements suggest that Respondent is selling brand names and business names that are available for consumers to use for their business regardless of what that business might be. In this context Respondent, who is based in the United States, would at the very least have an obligation to confirm that what it is selling as a premium domain name and as part of an available brand package does not trade upon the United States trademarks rights of others (even if limited to a particular class).
Here, a simple Internet search for "goodr," as shown by Complainant's evidence, would have quickly revealed Complainant's use and rights in GOODR in the United States. As Respondent has provided no evidence on how it clears the domain names and associated brands it sells to consumers, it appears from the available record before the Panel that Respondent simply registered the disputed domain name without conducting any due diligence and then put it up for sale as a premium domain name. (Alternatively, it could be that Respondent actually conducted some clearance searches as suggested by Respondent's advertising, and became aware of the Complainant's rights.) It thus seems more likely than not that Respondent is attempting to sell the disputed domain name for profit not based on some alleged common descriptive connotation but on the basis of the disputed domain name's "snappy" characteristics. Most importantly, the Respondent is not offering (and has never offered) goods or services under any "goodr" mark or been known as "goodr". The Respondent is not utilizing the disputed domain name or claimed brand for the sale of actual bona fide goods and services, but rather is attempting to sell the disputed domain name for profit, albeit packaged with some very modest enhanced branding services. Such use of the disputed domain name for profit does lend support to the notion that Respondent is not making a bona fide use of the disputed domain name and does not have a legitimate interest in the disputed domain name. WIPO Overview at Section 2.10 and cases cited therein.
Given that Complainant has established with sufficient evidence that it owns rights in the GOODR 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
Under paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used the disputed domain name in bad faith. However, unlike the assessment of a respondent's legitimate rights or interests in a disputed domain name, which have to be assessed at the time of the complaint, the question of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name by the respondent.
Here, Respondent asserts that it was unaware of Complainant's rights in the GOODR name and mark when Respondent registered the disputed domain name in November 2017. Although on its face such a claim could suggest that Respondent may not have specifically targeted Complainant's GOODR brand, the inquiry is not so limited where, as here, Respondent is essentially engaged in the business of buying and selling domain names. Respondent is currently offering over 23,000 domain names for sale as part of its online marketplace at <brandroot.com>. Respondent has been in this business since at least 2015 (and possibly 2010 as maintained by Respondent) and has, by its own admission, bought and sold numerous domain names since then. Given Respondent's business activities, while Respondent may not be a domain aggregator per se, Respondent is nevertheless engaged in a form of domaining and promotes itself on its website at <brandroot.com> as a "domain brokering service" and a "prime destination for buying domain names on the Internet". As such, the question turns on whether Respondent, as part of its business activities of buying and selling domain names, has some duty of making a good faith effort to search for and avoid the registration of trademark-abusive domain names.
Panels that have considered the issue have held that in situations involving bulk registrations and purchases of domain names by domainers or aggregators there is an affirmative obligation to avoid the registration of trademark-abusive domain names. WIPO Overview 3.0 at section 3.2.3. That obligation, however, is tempered, in part, by the possibility that similar trademarks may coexist across multiple jurisdictions and/or classes of good and services. This is particularly so in cases involving marks that might consist of a common or descriptive term and which coexist in separate spheres of activity, such as, by way of example, DELTA for airlines and DELTA for faucets. This, of course, is not to say that registering a domain name based on a possible common term should constitute automatic proof of good faith, as a common term can become a trademark for particular goods or services. Thus, Registering and using a domain name based on a common term (were this one) to exploit its trademark value would likely be an act of bad faith. See WIPO Overview 3.0 at sections 2.10 and 3.2.1. Moreover, at the very least, this affirmative obligation exists in the jurisdiction where the party registering a domain name is based.
As already noted above, the Panel does not accept that "goodr" or "gooder" is a common term and indeed neither term appears in any dictionary. So for purposes of this proceeding, the issue is the extent of steps taken by Respondent to screen the disputed domain name when it acquired it at auction in November 2017, and in particular the United States where both parties are based and where Complainant owns a pre-existing trademark registration for GOODR. The evidence before the Panel does not disclose how Respondent screens the domain names it acquires or registers. However, it appears that Respondent may be doing some review or assessment of the domain names it acquires and resells as part of its online marketplace, or at least implies that it does, as Respondent makes claims on its website at <brandroot.com> that "[w]e put a lot of time and research into creating our unique creative domain names" and that "[e]ach and every listed name is carefully handpicked and then put up for sale". Further underscoring this issue is the fact that Respondent is selling domain names as part of available brand portfolios, which suggests to a consumer that the name included in a domain name being purchased is available for use as a brand, thereby again indicating some sort of initial review by Respondent.
The record does not contain any information regarding what steps Respondent took to screen the disputed domain name when it acquired it in November 2017. While the Panel is mindful that there is no evidence in the record showing that Respondent has been the subject of prior complaints regarding its registration or use of domain names, the evidence before the Panel is that Respondent either did not search and/or screen the disputed domain name when Respondent acquired it, which would amount to willful blindness, or did conduct a screen and knew of Complainant's rights in the GOODR name and mark in the United States. As Respondent claims that it was unaware of Complainant's rights at the time of the acquisition of the disputed domain name, it appears more likely than not that Respondent deliberately failed to search and/or screen the disputed domain name. However, even accepting Respondent's claim that it engaged in an auction to acquire the disputed domain name (which Respondent considered to be a valuable property) without being aware of Complainant's rights in the GOODR mark, Respondent's claim is an admission that Respondent failed to search and/or screen the disputed domain name, as was Respondent's responsibility. This is particularly relevant given that Respondent promotes itself as a source of available brands and business names, claims to sell brand names and business names to consumers, and claims to provide some form of certification regarding domain names/portfolios it sells to consumers for over USD 1,500. The Panel thus concludes that Respondent's conduct, on the balance of the probabilities, in deliberately failing to search and/or screen the disputed domain name amounts to bad faith registration in the circumstances of this case.
As to Respondent's use of the disputed domain name, the Panel again notes that after registering the disputed domain name Respondent at some point posted a website that offered the disputed domain name for sale (as a principal part of a "marketing" package developed by Respondent) at a price that was seven times more than the price at which Respondent had acquired the disputed domain name at auction. In addition, Respondent promoted the disputed domain name on its website at the disputed domain name as a premium domain name with a high brand ranking and not as a domain name based on an alleged common or descriptive term. Such promotion and premium pricing would suggest that Respondent viewed "goodr" as more distinctive or arbitrary in nature, particularly as Respondent ranked the disputed domain name on its "comprehensive branding scale" as a 10 in "uniqueness" and an 8 on "brandability."
Simply put, Respondent, who promotes itself as a branding expert, either deliberately chose to ignore Complainant's rights or deliberately decided not to conduct any search when determining that GOODR was unique and had good "brandability". Respondent was either aware of, or through its own representations should have been aware of, Complainant's rights when acquiring the disputed domain name and when later seeking to capitalize on the disputed domain name.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
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 <goodr.com> be transferred to the Complainant.
William F. Hamilton
Date: August 28, 2018