WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dewberry Engineers Inc. v. Elizabeth Dewberry, Dewberry Designs
Case No. D2021-1791
1. The Parties
Complainant is Dewberry Engineers Inc., United States of America (“United States”), represented by McCandlish Lillard, P.C., United States.
Respondent is Elizabeth Dewberry, Dewberry Designs, United States.
2. The Domain Name and Registrar
The disputed domain name <dewberrydesigns.com> (the “Domain Name”) is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2021. On June 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 15, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 21, 2021.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on July 29, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is an engineering, architecture, real estate services, and emergency management firm, which offers a wide variety of additional services and has more than 50 locations in the United States. Complainant is also the owner of the domain name, <dewberry.com>, registered by Complainant on October 5, 1998.
Complainant owns the registered service marks, DEWBERRY (United States Registration No. 2991043) and DEWBERRY (with design) (United States Registration No. 2991044) both registered on September 6, 2005 for a wide variety of services. These marks are used by Complainant in connection with all of its services.
The Domain Name was registered on April 13, 2021 using a privacy service. The Registrar confirmed to the Center Respondent’s contact details, including that her last name is Dewberry and she is located in Tennessee. At the time of the Complaint, the website related to the Domain Name displays the following message: “Only one step left! To finish setting up your new web address, go to your domain settings, click “Connect existing domain”, and enter: dewberrydesigns.com”.
5. Parties’ Contentions
(i) Identical or Confusingly Similar
Complainant contends that the Domain Name is on its face confusingly similar to both Complainant’s domain name <dewberry.com>, and Complainant’s DEWBERRY service marks. In a side-by-side comparison of the Domain Name and the textual component of the DEWBERRY service marks, the Domain Name incorporates the service marks entirely adding only the descriptive term “designs”. Complainant thus claims the Domain Name does not sufficiently alter the overall commercial impression and therefore renders the Domain Name to be confusingly similar in appearance to Complainant’s marks.
(ii) Rights or Legitimate Interests
Complainant submits that Respondent should be considered to have no rights or legitimate interests with respect to the Domain Name because it is not a registered trademark or service mark, and is not yet linked to an active website. A Google search of the Domain Name does not return any results connected to Respondent. Complainant has not seen any evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Name or any name corresponding to the Domain Name, in connection with a bona fide offering of goods and services. In fact, Respondent does not appear to offer any goods or services whatsoever.
(iii) Registered and Used in Bad Faith
Complainant states that the Domain Name is confusingly similar to its domain name, <dewberry.com>, and was registered by people who neither do business as Dewberry nor have Dewberry as part of their name. Respondent registered the Domain Name on April 13, 2021, and while there is still no active website as of June 7, 2021, there would be a high likelihood of confusion if one were activated. Based on the near identical nature of the Domain Name to <dewberry.com>, the only conclusion is that the Domain Name was registered for one or more improper purposes, such as enabling creation of deceptive email addresses and impersonating Complainant’s personnel, diverting traffic from Complainant’s website, or seeking to sell the Domain Name to Complainant.
Respondent did not reply to Complainant’s contentions, except for two informal email communications sent to the Center on July 27 and July 28, 2021, in which Respondent indicated she is “a simple artist who debated selling earrings I haven’t even made on Shopify a while ago. I have obviously never done that, much less developed the site.” She also indicated that “I am not working, I just had surgery, I have two kids. Whatever this is, I don’t have time for it.” In her email of July 28, Respondent further indicated that she lives in Tennessee and expressed general confusion about the case, the Center, and what it was about. Both emails were signed by a person named Elizabeth Dewberry. The Center informed Respondent that the due date for submission of a Response had passed, and that the Rules make no express provision for the filing of materials by either party at this stage of the proceedings except as may be requested or permitted by the Panel.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent 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 Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Respondent’s Informal Emails
The Panel determines that although Respondent did not appear to fully understand the nature of this case, her emails do provide some minimal information that is helpful for consideration in this case.
B. Identical or Confusingly Similar
Complainant has demonstrated that it has rights in its DEWBERRY service marks, through registration and regular use. The Panel finds that the Domain Name incorporates the DEWBERRY mark in its entirety, while adding the term “designs”. This combination in the Domain Name creates a confusing similarity with Complainant’s DEWBERRY mark. Numerous UDRP decisions have found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also section 1.7, which states, “where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
Accordingly, the Panel finds that the Domain Name is confusingly similar to a service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Regarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, Complainant alleged that Respondent should be considered to have no rights or legitimate interests with respect to the Domain Name because it is not a registered trademark or service mark, the Domain Name does not return any results connected to Respondent, and Complainant has not seen any evidence of Respondent’s use of, or demonstrable preparations to use, the Domain Name or any name corresponding to the Domain Name, in connection with a bona fide offering of goods and services.
Respondent’s two emails, on the other hand, were signed by a person who identified herself as Elizabeth Dewberry located in Tennessee – this is consistent with the Registrar’s identification of Respondent (and Respondent’s address), after Respondent had registered the Domain Name using a privacy service. Respondent indicated that she is an artist who had considered selling earrings but did not develop a website.
The Panel has very little evidence to go on in this case, although the Panel has no reason to doubt the statements made by each party. The Panel observes that the Domain Name is not connected to any website and there is no evidence of Respondent’s craft business. However, Respondent’s last name does appear to be Dewberry, which was independently verified by the Registrar. In the interest of judicial economy, and in light of the Panel’s decision on the third element below, the Panel does not decide the question of whether Respondent has established any rights or legitimate interests in the Domain Name under the Policy.
D. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark” and “bearing in mind that the burden of proof rests with the complainant.”
Here, Complainant alleged that that the Domain Name was registered by a person who neither does business as Dewberry nor has Dewberry as part of their name, that there is no active website and there would be a high likelihood of confusion if one were activated, and that the only conclusion is that the Domain Name was registered for one or more improper purposes.
The Panel notes that somewhat surprisingly Complainant maintained these allegation in its amended Complainant, even after Respondent had been identified by the Registrar with the last name being Dewberry. It did not, for example, allege that the contact details were fake (though the Panel has no reason on the record before it to believe that would be the case).
From the little evidence that is before the Panel, where Respondent’s last name appears to be Dewberry and she has stated that she is an artist who had intended to make and sell earrings though an online website (but never did so), the Domain Name (<dewberrydesigns.com>) would appear to reflect consistency with these indicia. Moreover and importantly, Complainant has provided no evidence of Respondent’s bad faith registration and use of the Domain Name, whether that Respondent targeted Complainant’s DEWBERRY mark when registering the Domain Name, or through improper use of the Domain Name for an active website or to attempt to sell it to Complainant or to a competitor of Complainant at a price in excess of out-of-pocket costs, or for any other bad faith purpose.
For all of these reasons, and based on the circumstances in this case, the Panel determines that Complainant has failed to demonstrate that Respondent registered and use the Domain Name in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: August 23, 2021