WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mimic Skateboards Inc. v. Domains By Proxy, LLC / Travis McGlothin, Point Distribution
Case No. D2019-0722
1. The Parties
The Complainant is Mimic Skateboards Inc., United States of America (the “United States”), represented by Lewis & Lin, LLC, United States.
The Respondent is Domains By Proxy, LLC, United States / Travis McGlothin, United States, self‑represented.
2. The Domain Name and Registrar
The disputed domain name <customskateboard.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2019. On April 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 2, 2019, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2019. The Response was filed with the Center on April 20, 2019. The Complainant submitted a Supplemental filing on April 25, 2019 to the Center and the Respondent submitted a Supplemental filing on the same day.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 9, 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.
4. Factual Background
The Complainant is a corporation organized under the laws of the State of California in January 2008 (according to the online database of the California Secretary of State) and headquartered in Huntington Beach, California, United States. The Complaint explains that the Complainant’s founder and president Travis Vandagriff has been operating “online custom printed skateboard businesses since 1999” and “currently owns and operates similar businesses at the following domain names: MimicSkateboards.com; sk8factory.com; CustomSkateboardPrinting.com; and BlankSkateDeck.com”. The Complaint, supported by the Affidavit of Mr. Vandagriff, asserts that the Complainant has also been operating its commercial website at “www.customskateboards.com” (differing from the Domain Name only by the plural “s”) since 2012. The Panel notes that this is borne out by screenshots stored on the Internet Archive’s Wayback Machine. The Complainant indicates that it has sold over 200,000 skateboard decks since 2012, and that its website had 110,000 unique users and visitors in 2018, with USD 700,000 in sales in 2018 (“much” of it related to the CUSTOMSKATEBOARDS.COM brand). The Complainant also claims thousands of followers and viewers on its YouTube, Instagram, Facebook, and Twitter social media accounts. The Complaint attaches examples as well of customer recommendations for CUSTOMSKATEBOARDS.COM skateboards on online messaging boards for skateboard builders before the time that the Respondent acquired the Domain Name.
The Complainant claims CUSTOMSKATEBOARDS.COM as a common law mark and has applied for United States trademark registration for that mark as a standard character mark (Serial Number 88337764, application date March 13, 2019, claiming first use in commerce in July 2013), as well as for registration of its logo as a design mark that prominently features the same string of characters (Serial Number 88188530, application date November 9, 2018, claiming first use in commerce in February 2007). The design mark has been examined by the United States Patent and Trademark Office (“USPTO”) and was published for opposition on May 7, 2019. The Complainant’s application for the design mark expressly includes the following disclaimer: “No claim is made to the exclusive right to use ‘CUSTOMSKATEBOARDS.COM’ apart from the mark as shown.”
The Registrar indicates that the Domain Name was created on March 4, 2003 and that at the time this dispute arose, it was registered in the name of a domain privacy service associated with the Registrar. Following notice of this dispute, the Registrar identified the registrant as Travis McGlothin and the registrant organization as “Point Distribution”. The online database maintained by the Nevada Secretary of State lists Point Distribution, Inc. (at the same postal address in Las Vegas, Nevada, United States given for the Domain Name registrant) as an active Nevada corporation first registered in June 2004. The corporation’s only listed officer and director is Travis McGlothin. Mr. McGlothin filed a Response in this proceeding stating that he is the “Founder, President, and Director” of Point Distribution, Inc., “established in 2004”. The domain privacy service has not expressed an interest in the Domain Name in this proceeding. Hence, in this Decision, the “Respondent” will refer hereafter collectively to Travis McGlothin and Point Distribution, Inc.
The Respondent operates a website at “www.pointdistribution.com” (the “Respondent’s website”), advertising and taking orders for its business of manufacturing custom skateboards and printing designs on skateboards, skateboard wheels, and skateboard trucks. The Respondent advertises that it has produced over one million skateboards, and the Response claims USD 1.2 million in sales in 2018. Much of the Respondent’s business is wholesale, as it manufactures skateboards and accessories designed and printed for skateboard retailers, evidently including the Complainant in 2013.
The Respondent holds several domain names in addition to <pointdistribution.com> and has used them for websites and email addresses in its business. These include <customskateboardproducts.com> (since March 2007) and <customskateboardwheels.com> since 2009. The Response includes evidence of the purchase of the domain name <customskateboardproducts.com> in March 2007, and screenshots from the Wayback Machine beginning in June 2009 show that this domain name was used to advertise the Respondent’s business or redirect to the Respondent’s website at “www.pointdistribution.com”. The record shows that the Respondent used “[...]@customskateboardproducts.com” as a contact email address in taking orders and dealing with customers in 2009-2010. A 2010 print advertisement in Transword Business Magazine displays “www.customskateboardproducts.com” as the website address for the Respondent, and the record includes copies of actual 2011 and 2015 customer order forms with “www.customskateboardproducts.com” under the Respondent’s name and logo. At the time of this Decision, the domain names <customskateboardproducts> and <customskateboardwheels.com> simply redirect to the Respondent’s website. The Respondent states that it has used the descriptive terms “Custom Skateboard” and “Custom Skateboards” (singular and plural) in its marketing and on its website since the founding of the company in 2004. Both forms appear on the Respondent’s website at the time of this Decision.
The record shows that the Respondent purchased the Domain Name at auction from the Registrar on April 7, 2018 for USD 530. The Response explains that the Respondent considered purchasing the Domain Name in 2015, again while it was offered at auction by the Registrar, but the Respondent deemed it too expensive at that time. According to the Response, the Respondent found the Domain Name appealing because it was a shortened version of the string “custom skateboard products” that the Respondent already had been using in marketing and as a website and email domain name since 2009.
From screenshots furnished with the Complaint, it appears that the Domain Name initially redirected to the Respondent’s website at “www.pointdistribution.com.” Subsequently, the Domain Name resolved to a landing page with an announcement about a “New Custom Skateboard Website Coming Soon!”, including information about the offerings available from the Respondent and a link to the Respondent’s website, with additional links to the pages on that website for ordering, respectively, small quantities of skateboards or for ordering large quantities wholesale. The Domain Name continues to resolve to this landing page at the time of this Decision. The landing page includes a disclaimer of affiliation with the Complainant and with the Complainant’s website at “www.customskateboards.com”.
The Complainant found the Domain Name advertised for sale on a domain auction site in late 2018 and submitted USD 1,500 to the site operator to purchase the Domain Name. When contacted, the Respondent denied listing the Domain Name for sale and declined to authorize the transfer. After a succession of emails and telephone conversations, the parties exchanged a draft agreement to transfer the Domain Name for USD 1,500. The correspondence and draft agreement are included in the record. The Respondent reports that the Complainant withdrew from the discussions. The parties did not execute a transfer agreement, and this proceeding followed.
5. Parties’ Contentions
The Complainant claims common law trademark rights in CUSTOMSKATEBOARDS.COM “due to continuous and exclusive use since 2012, significant sales and extensive online advertising, plus the resulting public recognition and reputation” of the mark. The Complainant concedes that the word mark is descriptive but argues that it has acquired distinctiveness under the laws of the United States and for Policy purposes. The Complainant asserts that the Domain Name, deleting only the letter “s”, is “legally identical and confusingly similar”.
The Complainant argues that the Respondent is not commonly known by a corresponding name and used a confusingly similar name for the Domain Name without permission. The Complainant contends that the Respondent is a competitor who has used the Domain Name only to redirect Internet users to the Respondent’s competing website, which cannot be considered a legitimate interest.
The Complainant infers from the Respondent’s correspondence and its familiarity with the industry that the Respondent was aware of the Complainant and its mark before the Respondent acquired the Domain Name in April 2018. The Complainant concludes that the Respondent acquired the Domain Name and used it to redirect visitors to the Respondent’s website in bad faith, to disrupt the business of a competitor, deny it the use of a corresponding domain name, and mislead Internet users for commercial gain. The Complainant argues that the potential for consumer confusion is heightened by the fact that the principals in both businesses share the same first name, “Travis”, and speculates that “Travis from Point Distribution can also very easily mimic Travis from Mimic’s email address – it would be just one letter off”.
The Respondent, which is not represented by counsel, challenges the Complainant’s common law trademark claims regarding a “generic” term and argues that the Domain Name <customskateboard.com>, the Complainant’s domain name <customskateboards.com>, and the Respondent’s long-time domain name <customskateboardproducts.com> are all “very similar and generic and therefore cannot have inherent (or established) common law or outright trademark rights”.
The Respondent claims a legitimate interest in the Domain Name, based on its desire “to use the shorter URL” <customskateboard.com> “of our already marketed URL” <customskateboardproducts.com>, which the Respondent had used since 2009, before the Complainant started using <customskateboards.com> in 2012.
The Respondent denies bad faith, arguing that the Domain Name is an appropriate generic term relevant for the Respondent’s current website and that the Respondent is developing a dedicated website that will offer “more custom options” for its products. The Respondent states that it agreed to inform the Complainant when it developed a website for the Domain Name and added a disclaimer of affiliation on the landing page associated with the Domain Name as a “courtesy” to the Complainant.
The Respondent asserts that the Complainant is “attempting to hijack the disputed domain as he is aware of our prior use” of the similar domain name <customskateboardproducts.com> and the fact that the Respondent was “first to market and commerce with the generic terms”. The Panel reads this assertion as a request for a finding of Reverse Domain Name Hijacking under the Rules, paragraph 15(e).
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Supplemental Filings
The Complainant and the Respondent each submitted a Supplemental Filing. Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
The Complainant’s Supplemental Filing argues first that the “Respondent’s purported testimony is unsworn, and, as such, is entitled to little or no weight and should be disregarded,” citing The Knot, Inc. v. Alexis Luongo, WIPO Case No. D2006-0296 (“The Knot”). The Complainant contends, second, that the Response demonstrates no use of the Respondent’s domain name <customskateboardproducts.com> after 2010, and that in any event this is irrelevant to the Respondent’s motivation for registering the Domain Name in 2018.
The Respondent submitted a Supplemental Filing adding a signed statement under penalty of perjury to the Response and pointing out that the Response includes evidence of using the domain name <customskateboardproducts.com> both before and after 2012, when the Complainant started using <customskateboards.com>.
The Panel accepts the Parties’ Supplemental Filings for consideration because they concern, on the one hand, formalities of the Response and, on the other, an argument advanced by the Respondent based on another domain name held by the Respondent. The latter is addressed below in connection with the second and third elements of the Complaint.
The Complainant’s argument concerning the “unsworn” Response is not well founded. The decision cited by the Complainant, The Knot, was a UDRP proceeding in which no formal response was filed and the respondent merely sent emails with conclusory statements “unsupported by any factual evidence”. That is hardly the case here. The Respondent is self-represented, and Mr. McGlothin signed the Response, which includes the certification required of “the Respondent or an authorized representative” by Rule 5(c)(viii). Specifically, this affirms over Mr. McGlothin’s signature as follows: “The Respondent certifies that the information contained in this Response is to the best of the Respondent’s knowledge complete and accurate …”. The Response attaches documents or screenshots supporting the material factual assertions on which the Response relies (and which are cited in this Decision). This is sufficient for evidentiary purposes in the present circumstances and is entitled to weight.
B. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. The Complaint is based on an unregistered, common law mark, CUSTOMSKATEBOARDS.COM. The Policy does not require a registered trademark, but “[t]o establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.” Id., section 1.3. As the Overview goes on to explain:
“Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.” Id.
The record in this proceeding shows substantial online advertising, website visitors, and related sales since 2012 associated with the claimed mark. The Respondent contends that the claimed mark is “generic”, however, and the Complainant disclaimed the exclusive right to use the characters “CUSTOM SKATEBOARDS.COM” apart from the mark as shown in its application for a design mark. This disclaimer is not dispositive of the Complainant’s pending application for a standard character mark, nor of its claim to common law trademark status in this proceeding. The many examples furnished with the Complaint illustrate that while “custom skateboards” or “customskateboards.com” are descriptive terms, as the Complainant acknowledges, they are unlikely to be deemed “generic” under United States law and therefore incapable of acquiring distinctiveness and being used as a trademark. The Panel finds sufficient evidence on this record that the Complainant has common law rights in CUSTOMSKATEBOARDS.COM for purposes of the first element of the Complaint. The Domain Name differs by one letter, making “skateboard” singular rather than plural. The Panel considers this a close enough approximation in appearance, sound, and sense to render the Domain Name confusingly similar.
The Panel concludes that the Complainant has established the first element of the Complaint.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, a lack of permissive use, and the failure to use the Domain Name for an active, relevant website. This shifts the burden to the Respondent.
Here, the Respondent refers to its intent to develop a separate website associated with the Domain Name, with “more options” for custom skateboards, but there is no concrete evidence of a related business plan, expenditures, or other preparatory steps (see WIPO Overview 3.0, section 2.2). Instead, the Panel must look to the actual use of the Domain Name to date, which was first to redirect to the Respondent’s current website and then to advertise the Respondent’s business and provide multiple links to the Respondent’s current website. The Domain Name is in fact relevant to the Respondent’s long-established business and current website, which advertises and sells custom skateboards. The term corresponding to the Domain Name, “custom skateboard”, is found on the Respondent’s website, with and without the word “products”, and it has been since 2007. In addition, the Respondent’s use of the domain name <customskateboardproducts.com> since at least 2009 – for a website, email addresses, and more recently to redirect Internet users to its current website – further demonstrates the continuous marketing use of a string incorporating the same string as the Domain Name. This use precedes notice of the current dispute and, indeed, precedes the Complainant’s use of the common law mark CUSTOMSKATEBOARDS.COM.
Hence, the Panel would conclude that the Respondent was using the Domain Name “in connection with a bona fide offering of goods or services” within the meaning of the Policy, paragraph 4(c)(i), unless the evidence indicated the probability that that the Respondent was motivated to register the Domain Name in April 2018 for its value in attacking the Complainant’s common law trademark rather than for its descriptive value. That issue is best addressed in the following section on the third element of the Complaint, bad faith.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Paragraph 4(b)(ii) is not apposite: there is no evidence of a “pattern” of registering domain names to deny the Complainant or other trademark holders corresponding domain names. Moreover, it appears that the Respondent’s business is largely wholesale and the Complainant’s largely retail, and there is little in the record to demonstrate that the two actually dealt with each other or with the same customers or prospective customers. Thus, the Respondent’s denials of an intent to disrupt the Complainant’s business or poach its customers are plausible, especially in light of the fact that the Respondent was already using the term “custom skateboard” on its website and in domain names, email addresses, and print advertising several years before the Complainant started using the plural version of the term, “custom skateboards”, for a domain name that gradually acquired distinctiveness in what the Complainant characterizes as a niche market. The term is admittedly descriptive and similar to ones that the Respondent was already using. The Panel notes, based on screenshots from the Wayback Machine, that in April 2018, when the Respondent acquired the Domain Name, the Complainant did not signal its assertion of common law trademark rights on its website with a “TM” symbol or otherwise.
There is no evidence in the record that the Complainant is a principal competitor of the Respondent; in fact, it appears that its overall sales are lower than those of the Respondent and are made through several websites, not all of them linked to the one branded “www.customskateboards.com”. In April 2018, the Complainant had not applied for trademark registrations and did not publicly claim a common law trademark on its website. On the other hand, the Respondent made prior use of the descriptive term “custom skateboard” and had a plausible rationale for seeking a Domain Name that described its products and was shorter than its existing <customskateboardproducts.com> domain name. On balance, this motivation is more credible than the Complainant’s inference that the Respondent suddenly became concerned about the Complainant as a competitor, realized the trademark value of the Complainant’s domain name, and acquired a similar Domain Name to injure the Complainant and misdirect its potential customers.
The Complainant does not argue that the Respondent acquired the Domain Name principally with the intent to sell it to the Complainant, and the Panel does not infer such an intent from the Parties’ settlement discussions.
The Panel’s findings dispose of both the Complainant’s challenge to the Respondent’s claim to a legitimate interest and the Complainant’s inference of bad faith. The Panel concludes that the Respondent prevails on both the second and third elements of the Complaint.
E. Reverse Domain Name Hijacking
Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (“RDNH”) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding here.
Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.).
The Complainant has the burden of persuasion in a UDRP Complaint and did not prevail on the second and third elements. However, the Respondent does not deny prior knowledge of the Complainant at the time of the Domain Name registration, and questions of bad faith and legitimate interests involving parties in the same industry are typically fact-bound and subject to their differences of interpretation. The Panel does not find compelling evidence that the Complainant brought the Complaint in bad faith or abusively and accordingly denies the request for a finding of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: May 23, 2019