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 (the “Domain Name”) is registered with GoD, 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: MimicS, , CustomSkateboardP, and BlankSkateD”. The Complaint, supported by the Affidavit of Mr. Vandagriff, asserts that the Complainant has also been operating its commercial website at “www.customs” (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 “” (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 and has used them for websites and email addresses in its business. These include (since March 2007) and since 2009. The Response includes evidence of the purchase of the domain name 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 “”. The record shows that the Respondent used “[...]@” 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.” as the website address for the Respondent, and the record includes copies of actual 2011 and 2015 customer order forms with “www.” under the Respondent’s name and logo. At the time of this Decision, the domain names and 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 “.” 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.customs”.

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 A. Complainant

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