GalvinPower.org: UDRP unveils the lucrative side of expired domains with SEO juice

Michael P. Galvin v. Nguyen Manh Ha / VJIAT

Claim Number: FA2411002125112

PARTIES

Complainant is Michael P. Galvin (“Complainant”), represented by Marlene Williams of Winston & Strawn LLP, California, USA. Respondent is Nguyen Manh Ha / VJIAT (“Respondent”), Viet Nam.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is (“Domain Name”), registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

Nicholas J.T. Smith as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 14, 2024; Forum received payment on November 14, 2024.

On November 15, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 November 19, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 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@galvinpower.org. Also on November 19, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

On December 10, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

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

Complainant is an individual who carries on the work of his father, Robert W. Galvin, the former Chief Executive Officer of Motorola Inc. Following his retirement from Motorola, Robert Galvin established the Galvin Electricity Initiative and the Galvin Center for Energy Innovation at the Illinois Institute of Technology. The Galvin Electricity Initiative is responsible for the creation of the Perfect Power system providing sustainable delivery of electrical power. In order to promote its services, the Galvin Electricity Initiative registered the Domain Name and used it for a number of years. The Galvin Electricity Initiative was also the subject of numerous articles discussing its efforts. Robert Galvin is also the author of the book “Perfect Power”. The Galvin Center for Energy Innovation provides further services in connection with the Generation, transmission, distribution, management and consumption of electricity.

These efforts have resulted in common law rights being created in GALVIN, GALVIN CENTER FOR ELECTRICITY INNOVATION, GALVIN POWER and GALVIN ELECTRICITY INIATIVTE (collectively “Galvin Marks”). Complainant is the board chair of Illinois Tech and actively promotes the services offered by the Galvin Electricity Initiative and the Galvin Center for Energy Innovation. Complainant has received awards and recognition for his role in the growth of the goodwill of the Galvin name. Complainant has also endowed several scholarships in his personal name. Respondent’s domain name is confusingly similar to Complainant’s marks because it incorporates the GALVIN element of each mark and adds the generic term “power” and the “.com” generic top-level domain (“gTLD”).

Respondent has no legitimate interests in the domain name. Complainant has not authorized or licensed Respondent any rights in the GALVIN marks. Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. From 2006 the Galvin Electricity Initiative owned the domain name and used it for a website (“Complainant’s Website”) to promote its services. Following the failure to renew the registration of the Domain Name, Respondent registered the Domain Name and has used it to resolve to a website (“Respondent’s Website”) that contains material from the Complainant’s Website. Respondent then adds additional advertisements, for which Respondent likely receives revenue.

Respondent registered and uses the domain name in bad faith. Respondent registered the Domain Name following the failure to renew by the Galvin Electricity Initiative in order to take advantage of confusion with the GALVIN marks. Respondent passes off as Complainant by using copyrighted material from the Complainant’s Website to create Respondent’s Website where it receives advertising revenue. Respondent also had actual knowledge of Complainant’s rights in the GALVIN marks at the time of registration, given the use of the Domain Name for a website containing material from Complainant’s Website.

B. Respondent

Respondent failed to submit a formal Response in this proceeding. On or around the date the Panel was appointed Respondent sent an e-mail to Forum denying any awareness of Complainant and indicating that it deleted the Respondent’s Website. The Panel has visited the site at the Domain Name and confirms that the Respondent’s Website is still active but now contains the disclaimer “Galvinpower.org is in no way related to P. Galvin or its founder P. Galvin.”

FINDINGS

Complainant does not provide sufficient evidence of ownership of trademark rights for the GALVIN marks for the purposes of satisfying Policy ¶ 4(a)(i).

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.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

Complainant does not hold any trademark registrations for the GALVIN marks rather it relies on establishing common law rights in the mark. Policy ¶ 4(a)(i) does not require a complainant to own a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).

Establishing common law rights in a mark requires a showing of secondary meaning of the mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Lack of evidence to support secondary meaning may result in failure to establish common law rights in a mark. See CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) (finding Complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant.”).

It is not sufficient that trademark rights exist, they have to be held by the Complainant. The present Complaint is, to be blunt, brought by an entity who does not hold trademark rights in the GALVIN marks and as such the requirements of the Policy cannot be satisfied.

The Panel considers that the evidence before it would, prima facie, be satisfactory to establish common law rights in the GALVIN marks but that any such rights would be held by the Galvin Electricity Initiative and the Galvin Center for Energy Innovation at the Illinois Institute of Technology. There is considerable evidence that each of these entities have extensively used the GALVIN Marks to promote their services such that common law rights would arise. The Complaint is unclear as to the exact nature of each of the entities but to the extent that they are not independent entities, they appear to be centers located at the Illinois Institute of Technology who would be the holder of the common law rights in the GALVIN marks.

The mere fact that Complainant is the son of the founder of these entities and chairs a board governing the entities (on this aspect the Complaint is unclear, merely stating that Complainant is the “Illinois Tech Board Chair” but the Panel takes this statement at its highest) does not result in him having ownership rights in these common law marks. To the extent that services are provided under the GALVIN marks these services are provided by the entities and hence the entities themselves, not the chair of the governing board, would hold rights in the GALVIN marks.

In the absence of any registered marks, and noting that Complainant does not hold mark rights arising from the use of the GALVIN marks by Galvin Electricity Initiative and the Galvin Center for Energy Innovation, it is therefore necessary to consider if any services are provided by the Complainant under the GALVIN marks to determine if Complainant has rights in the marks. The Panel notes the Complainant’s personal name is Michael Galvin. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition at 1.5, in response to the question “Can a complainant show UDRP-relevant rights in a personal name?” states that:

1.5.2 The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.

Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense) or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint.

In the present case the Panel is unsatisfied on the evidence before it that the Complainant has achieved secondary meaning in any of the GALVIN marks. The Complainant has had a successful legal and business career and currently serves as board chair of the Galvin Electricity Initiative and the Galvin Center for Energy Innovation. The Complainant has endowed scholarships in his own personal name and has had a tower on the Illinois Institute of Technology named after him. However, there is no evidence (or submissions) that the Complainant (separate to the Galvin Electricity Initiative and the Galvin Center for Energy Innovation) has used the GALVIN marks as a unique trade identifier for specific goods or services in trade and commerce, that is, in a manner that functions as a trade mark.

Guided by the statements from the WIPO Overview, the evidence before the Panel does not show that the named Complainant holds common law trademark rights in the GALVIN marks and so Panel finds that Complainant has not established Policy ¶ 4(a)(i) of the Policy. The Panel notes that there may be grounds to consider a refiled complaint in respect of this Domain Name, brought by an entity with common law rights in one or more of the GALVIN marks, subject to the applicable criteria.

As the Panel has concluded that Complainant has not satisfied Policy ¶ 4(a)(i) because it has not established that it holds any rights in the GALVIN marks, the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.

Nicholas J.T. Smith, Panelist

Dated: December 11, 2024