A small business owner operating from the domain TheGardenSavvy.com was hit with a UDRP from Hobby Fun LLC, operators of GardenSavvy.com.
Despite not having a trademark for GARDEN SAVVY, the Complainant rolled the dice in this case and they lost, as the Respondent’s registration and use of the domain was not made in bad faith; they actually run a business of garden decor.
The Forum panelist called the UDRP “misguided” and not malicious, therefore depriving the Respondent of a decision of Reverse Domain Name Hijacking.
The domain transfer was denied.
DECISION
Hobby Fun, LLC v. Savannah Schellenschlager-Damer / The Garden Savvy
Claim Number: FA2402002083049
PARTIES
Complainant is Hobby Fun, LLC (“Complainant”), represented by John Ehrling, New York, USA. Respondent is Savannah Schellenschlager-Damer / The Garden Savvy (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is thegardensavvy.com, registered with Squarespace Domains II LLC.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Charles A. Kuechenmeister and Flip Petillion as Panelists and Paddy Tam as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 8, 2024; Forum received payment on February 8, 2024.
On February 9, 2024, Squarespace Domains II LLC confirmed by e-mail to Forum that the thegardensavvy.com domain name is registered with Squarespace Domains II LLC and that Respondent is the current registrant of the name. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@thegardensavvy.com. Also on February 12, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On March 12, 2024, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, Forum appointed Charles A. Kuechenmeister and Flip Petillion as Panelists and Paddy Tam as Chair.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant claims that it has used the domain name gardensavvy.com since 2019 and “garden planning” has been advertised on the related website providing information about gardening and a mechanism for connecting sellers of garden-related products with buyers. The Complainant’s mark is not registered with the US Patent and Trademark Office (USPTO) and the Complainant does not claim the exclusive rights to use the word “savvy” or “garden”. The Disputed Domain Name is identical to Complainant’s domain name gardensavvy.com, except for the insertion of the word “the” before “garden”.
The Complainant further contends that the Complainant had used the mark “GardenSavvy” for several years before the Respondent registered the Disputed Domain Name. Both the Complainant and the Respondent were engaged in garden-related activities. The goods and services advertised by the Respondent on its website include “garden bed design.”
The Complainant also alleges that the Disputed Domain Name thegardensavvy.com was registered by the Respondent in August 2022 which is approximately three years after the Complainant started to use its domain name gardensavvy.com. As the existence of the Complainant’s domain name gardensavvy.com would be disclosed by performing a basic Google or similar search, the Respondent was aware or certainly should have been aware of it.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
The Complainant does not own any registered trademark on the term “Garden Savvy”.
The Disputed Domain Name was registered on August 17, 2022.
The Complainant and the Respondent exchanged letters prior to the filing of the present complaint but no amicable resolution has been reached.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “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.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
To satisfy the first element under Policy ¶ 4(a), the Complainant needs to prove its rights in a trademark and prove that the Disputed Domain Name is identical and/or confusingly similar to the trademark.
The Complainant claims that it filed a trademark application with USPTO for the mark “Garden Savvy” but the application was rejected. On this basis, the Panel is of the view that the Complainant has failed to prove that it has registered trademark rights on “Garden Savvy”.
The Complainant also asserts that it has used its domain name gardensavvy.com since 2019 but failed to present any evidence about the use of the domain name or the development of secondary meaning.
WIPO Jurisprudential Overview 3.0 at ¶ 1.3 states that “To 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. 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.” See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning…. Complainant claims common law rights based on having been at the center of the press worldwide since the release of its Rocket League game, selling over 10 million copies, totaling 36 million registered users and grossing over $110 million worldwide…. Further, Complainant provides a sampling of articles from 2015 to 2017, which shows that the PSYONIX trademarks have been extensively used by Complainant [and] are associated with Complainant amongst the consuming public worldwide. The Panel finds that Complainant does hold common law rights in the PSYONIX mark for the purposes of Policy ¶ 4(a)(i).”). See also Monument Traders Alliance, LLC v. Nicholas Thomas / Thrift Technologies, FA 2053092 (Forum Aug. 28, 2023) (“the Panel finds that Complainant’s use of THE WAR ROOM has not obtained secondary meaning. Therefore, based on the evidence in the record the Complainant has not met its burden of proof establishing that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Panel finds that Complainant has not provided the evidence necessary to establish secondary meaning in The War Room and has failed to prove the association of those words with Complainant. Therefore, the Panel finds that Complainant has not established rights in the WAR ROOM mark under Policy ¶ 4(a)(i). See Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning); see also Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)).”) See also Beneficial Bank v. Emile Jean-Baptiste, FA 1413731 (Forum Dec. 8, 2011).
For the foregoing reasons, the Panel finds that the Complainant fails to establish unregistered or common law trademark rights due to lack of evidence provided to support that the mark “Garden Savvy” has generated a secondary meaning. The Complainant has not satisfied Policy ¶ 4(a)(i).
As the Panel concludes that the Complainant has not satisfied the first element in the present case pursuant to Policy ¶ 4(a), it is not necessary to rule on the second and third element pursuant to Policy ¶ 4(a). See TL Software Inc. v. Randy Roberts, FA 2075183 (Forum Feb. 1, 2024).
Reverse Domain Name Hijacking
Pursuant to Rules ¶ 1, Reverse Domain Name Hijacking (RDNH) is defined as using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.
Although the Respondent did not respond to the Complaint within the required period of time, the Panel is still obliged to review if the Complaint was brought in bad faith due to the failure of proving all the three elements under Policy ¶ 4(a) by the Complainant.
Having reviewed the circumstances of the present case, the Panel is of the view that the Complainant genuinely believes that it has the prior rights on “Graden Savvy” despite the fact that no trademark has been registered. There is no fact demonstrating that the Complainant knew it could not succeed as to any of the required three elements or clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint. The Panel declines to make a finding of Reverse Domain Name Hijacking. See Timothy Edward Jones v. Joshua Eisenhower, FA 1800144 (Forum Sept. 18, 2018) (“Although reverse domain name hijacking might arguably be found in this matter, the Panel declines to do so. After reviewing the record as a whole, the Panel is convinced that in filing the complaint and pursuing this matter Complainant has been misguided as opposed to malicious.”).
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the thegardensavvy.com domain name be REMAIN WITH Respondent.
__________________________________________________________________
Charles A. Kuechenmeister and Flip Petillion as Panelists and
Paddy Tam as Chair
Dated: March 20, 2024
