WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Priority Gold LLC, v. Registration Private, Domains by Proxy, LLC / BCCONSULTINGGROUP LLC, BCCONSULTINGGROUPLLC

Case No. D2020-1787

1. The Parties

Complainant is Priority Gold LLC, United States of America (“United States”), represented by Mitchell, Silberberg & Knupp, LLP, United States.

Respondent is Registration Private, Domains by Proxy, LLC, United States / BCCONSULTINGGROUP LLC, BCCONSULTINGGROUPLLC, United States, represented by Mark C. Johnson, Esq., United States.

2. The Domain Name and Registrar

The disputed domain name <prioritygoldassets.com> 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 July 9, 2020. On July 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2020, 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 Complainant on July 22, 2020 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 July 27, 2020.

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 July 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2020. The Response was filed with the Center on August 19, 2020. On August 20, 2020, the Center received an email communication from a third party.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on September 29, 2020. 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, Priority Gold LLC, is a precious metals dealer in the United States. Complainant adopted and has been using the name PRIORITY GOLD in connection with its services and, in particular, for the sale and investing in precious metals such as gold and silver. Complainant owns and uses the domain name <prioritygold.com> for a website that promotes and provides information regarding Complainant and its services.

Respondent, BC Consulting Group LLC, is likewise based in the United States and markets and offers for sale precious metals, such as gold and silver coins and bars. Respondent registered the disputed domain name on April 7, 2020. Respondent has used, and is currently using, the disputed domain name for a website that offers precious metals for sale.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has been using the PRIORITY GOLD mark since at least as early as 2017 and that on account of Complainant’s efforts the PRIORITY GOLD mark has become a distinctive identifier of Complainant and its services and has achieved secondary meaning.

Complainant contends that the disputed domain name is confusingly similar to Complainant’s PRIORITY GOLD mark as it fully consists of the PRIORITY GOLD mark. Complainant maintains that the addition of the descriptive word “asset” does not distinguish the disputed domain name. Complainant also contends that the disputed domain name and its associated website has resulted in instances of actual confusion by customers.

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as respondent (i) has never been authorized by Complainant to register the disputed domain name or any domain name that consists of the PRIORITY GOLD mark, (ii) is not commonly known by the disputed domain name, and (iii) has used the disputed domain name to trade on Complainant’s goodwill in the PRIORITY GOLD mark in the precious metals industry to offer competing services. Complainant also argues that Respondent controls another website at <pceus.com>, as the landing page at the <pceus.com> domain name is identical to the landing page at the disputed domain name and both landing pages feature the identical tag line. Complainant also maintains that Respondent owns yet another website at <heritagegoldandsilver.com> as the physical address promoted for that website is the same as the one listed on the website at <pceus.com>. Complainant further argues that Respondent is operating a fraudulent website as it has received a complaint from a disgruntled customer who used Respondent’s services.

Lastly, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith as Respondent intentionally registered the disputed domain name to take advantage of Complainant’s rights in the PRIORITY GOLD mark for purposes of attracting consumers to Respondent’s website which promotes competing services.

B. Respondent

Respondent rejects Complainant’s contentions.

Respondent initially argues that Complainant’s PRIORITY GOLD mark is a weak descriptive mark and that Complainant has failed to establish secondary meaning in the PRIORITY GOLD mark. Respondent further argues that the disputed domain name, which consists of the added word “asset”, is not confusingly similar to Complainant’s PRIORITY GOLD mark as the PRIORITY GOLD mark is a weak descriptive mark with limited protection that extends solely to identical uses of marks and not to those with additional descriptive matter.

Respondent contends that it has rights and legitimate interests in the disputed domain name as it markets and offers an array of precious metals. Respondent also maintains that it has no connection to, does not own, and was not aware of the websites at <pceus.com> and <heritagegoldandsilver.com> until the Complaint was filed. Finally, Respondent rejects the contention that it is operating a fraudulent website based on one consumer complaint, given that Respondent fully reimbursed the customer in question.

Lastly, Respondent asserts that it registered and used the disputed domain name in good faith so that it could offer and sell its products online and not to disrupt Complainant’s business or create a likelihood of confusion with Complainant’s claimed PRIORITY GOLD mark. In that regard, Respondent maintains that the disputed domain name describes the goods sold by Respondent, namely, priority gold products.

C. Unsolicited Third Party Submission

On August 20, 2020, the Center received an email communication from an individual who claimed to be the owner of the <pceus.com> and <heritagegoldandsilver.com> domain names and associated websites. The individual objected to being involved in the matter, asserted that he is not connected to or involved with the disputed domain name and that the website at the disputed domain name actually “copied and pasted my website.”

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 Confusing Similarity

As Complainant does not own trademark registration for the PRIORITY GOLD mark, the preliminary issue is whether Complainant has established that it owns a common law or unregistered trademark in PRIORITY GOLD.

To establish unregistered or common law trademark rights for purposes of a UDRP, a complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. See section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A complainant cannot meet this burden with unsubstantiated or conclusory allegations, but needs to provide relevant evidence that covers 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. In addition, in situations such as here where a mark is used on the Internet for a relatively short period of time, a panel can also consider the type and scope of marketing activities, the nature of the goods and services and the extent of third party uses, if any, of similar marks in connection with identical or related goods or services.

Here, Complainant’s evidentiary support for its claim of having common law rights in the PRIORITY GOLD mark consists of (i) potential customer inquiries for 2018 and 2019, (ii) website analytics for Complainant’s <prioritygold.com> website, (iii) a sample of customer reviews regarding Complainant’s services, (iv) a press release that Complainant purportedly released to major media outlets, (v) some advertising conducted by Complainant for its services, (vi) Complainant’s membership in a watchdog organization in the precious metal industry, (vii) an industry award received by Complainant in 2019 and (viii) and an example of consumer confusion between Respondent and Complainant.

Respondent contends that Complainant’s evidence does not establish that Complainant has attained secondary meaning in the PRIORITY GOLD mark and argues that most of Complainant’s evidence is self-serving. By way of example, Respondent points to Complainant’s press release and notes that while Complainant claims to have widely publicized the press release in major media outlets, Complainant did not provide any evidence that the press release was carried by any major media outlets. Respondent also contends that the evidence provided by Complainant regarding its advertising and marketing efforts is very limited in nature and that Complainant has only used its claimed PRIORITY GOLD mark for a little more than two years. Respondent also contends that Complainant’s PRIORITY GOLD mark is a weak descriptive mark made up of a combination of common words that consumers will simply perceive as referring to superior or priority dealership services dealing in gold, silver and comparable precious metals.

Although Complainant’s evidence is limited, the Panel does not agree with Respondent that Complainant has no rights in PRIORITY GOLD or that PRIORITY GOLD is merely descriptive. Apart from the fact that Respondent provided no evidence showing that the term “priority gold” is commonly used by other parties in the precious metal industry or that “priority gold” is understood by consumers as having a descriptive connotation as Respondent contends, Respondent’s attempt to dissect the mark into a combination of common terms does not mean that PRIORITY GOLD cannot function as a trademark. By Respondent’s logic, a mark such as FIRST NATIONAL BANK would not be able to function as a trademark as it is made up of common terms. The touchstone, however, is not whether the components of the mark are common words but whether the mark in its totality is perceived by consumers as designating a source of origin for the particular goods or services being provided. Notably, Respondent implicitly recognizes this by arguing that PRIORITY GOLD is a weak mark, which suggests that Complainant may in fact have a trademark.

To be sure, the evidence before the Panel shows that (i) Complainant adopted the name and mark PRIORITY GOLD for its precious metal services and has used the mark for over two years, (ii) at least 38,000 consumers have visited Complainant’s website at <prioritygold.com> during the past two years, (iii) Complainant has received some favorable reviews from consumers and at least one industry award for its services and (iv) Complainant has made some efforts to promote its PRIORITY GOLD services which have generated over 50,000 leads in the past two years. Simply put, Complainant has provided sufficient evidence that it holds rights in a PRIORITY GOLD mark in connection with its precious metal services, even if such mark may be relatively weak.

With Complainant’s rights in the PRIORITY GOLD common law 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 (“gTLD”) such as “.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 panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.

In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s PRIORITY GOLD mark as it incorporates the entire PRIORITY GOLD mark at the head of the disputed domain name. The addition of the term “asset” does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s PRIORITY GOLD mark that fully appears and is recognizable in the disputed domain name. 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 PRIORITY GOLD (common law) mark and in showing that the disputed domain name is confusingly similar to that mark.

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.

Based on the evidence submitted in this proceeding, it appears that Respondent only recently registered and began using the disputed domain name to offer precious metal services that directly compete with those of Complainant. While Respondent’s owner claims in a sworn declaration, that he chose a domain name that would adequately describe his business and “apprise customers of the nature of my business and of the products I market and sell”, Respondent does not disclaim awareness of Complainant and its services. Indeed, a simple search on search engines such as Google or Bing would have revealed Complainant’s adoption and use of the PRIORITY GOLD mark for similar precious metal-related services.

While the Panel does not accept Complainant’s view that Respondent is operating a fraudulent website, based on the evidence before the Panel, the fact that Respondent may legitimately be offering precious metal services similar to those of Complainant does not render Respondent’s adoption of a name and disputed domain name that consumers will likely perceive as connected to Complainant as legitimate. Indeed, at least one consumer was confused and contacted Complainant believing Respondent’s website at the disputed domain name was connected to Complainant. Respondent cannot claim legitimate use by virtue of its current usage, when the disputed domain name used for its claimed business is based on another’s trademark and there is no evidence that Respondent was commonly known by the name corresponding to the disputed domain name at the time Respondent registered the disputed domain name. WIPO Overview 3.0 at section 2.3.

What is also lacking in Respondent’s submissions is any evidence that would establish that Respondent registered the disputed domain name because the term “priority gold” is merely descriptive and is simply understood by consumers as referring to “superior or priority services dealing in gold, silver and comparable precious metals”. Respondent did not provide any evidence that would support that contention and which would tend to show that Respondent registered the disputed domain name based on a commonly understood reference and not on the basis of Complainant’s rights in the PRIORITY GOLD mark. A conclusory allegation that a term is descriptive with no evidence, apart from claiming that the disputed domain name is made up from a combination of three common words, does not in itself establish a claim of how consumers perceive a disputed domain name that is based on the PRIORITY GOLD mark used by Complainant for similar services.

In sum, Respondent’s use of the disputed domain name to offer services that compete with those of Complainant under its PRIORITY GOLD mark does not constitute a legitimate use and is essentially opportunistic, particularly where, as here, the evidence shows that Respondent is a competitor of Complainant.

Given that Complainant has established with sufficient evidence that it owns (common law) rights in the PRIORITY GOLD 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

Given Respondent’s actions as noted above, the Panel finds that Respondent’s registration and use of the disputed domain name which consists of Complainant’s PRIORITY GOLD mark to offer competing precious metal services is being done opportunistically and in bad faith.

While Respondent maintains that it did not register the disputed domain name to disrupt Complainant’s business or to create a likelihood of confusion, and did so “to market, display and offer for sale precious metals products”, the fact remains that Respondent registered a domain name that fully incorporates Complainant’s PRIORITY GOLD mark with the term “asset”, which relates specifically to the financial investment services offered by Complainant. It is simply beyond cavil that Respondent randomly chose to register and use the disputed domain name that uses the PRIORITY GOLD mark for a website that competes with Complainant’s services. Indeed, Respondent does not claim that it was unaware of Complainant, its PRIORITY GOLD mark, or its services when it registered or started using the disputed domain name. If anything, Respondent either registered the disputed domain name in full knowledge of Complainant’s rights in PRIORITY GOLD or proceeded in what could be considered to be willful blindness as to Complainant’s rights. A simple search on Google or Bing would have quickly revealed Complainant’s prior use of PRIORITY GOLD for similar precious metal services as well as its “prioritygold.com” website. That Respondent appears to have failed to run any search underscores that Respondent’s likely intent was to register and use the disputed domain name that it knew would attract consumers to Respondent’s competing website. Such actions do not support a contention of acting in good faith.

Respondent’s claimed good faith is further undermined by the circumstances surrounding the <pceus.com> and <heritagegoldandsilver.com> domain names. While Complainant claims that Respondent is operating the websites, Respondent asserts that that is has never owned these domain name and only learned of these domain names when it read the Complaint. Notably also, a third party individual surfaced a day after Respondent filed its Response claiming that he is the owner of these domain names and asserting that Respondent had copied and pasted his website for Respondent’s website at the disputed domain name. A simple comparison of the screen shots of the website at <pceus.com> provided by Complainant with Respondent’s website at the disputed domain name shows the website to be strikingly similar and sharing some identical text, images, and layout. That can hardly be a coincidence. As Respondent did not provide any evidence to support its claim that it was not aware of the websites at <pceus.com> and <heritagegoldandsilver.com> until the Complaint was filed, it appears more probable than not that Respondent simply copied and misappropriated parts of the website at <pceus.com> for Respondent’s own website.

The fact that Respondent appears to have jump started its own website at the disputed domain name by copying significant portions of another party’s website further confirms that more likely than not Respondent also jump started its competing business by registering and using the disputed domain that is based on Complainant’s mark in bad faith and for Respondent’s gain.

Accordingly, the Panel finds that Complainant succeeds under this element 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 disputed domain name <prioritygoldassets.com> be transferred to Complainant.

Georges Nahitchevansky
Sole Panelist
Date: October 19, 2020