Scientific Specialties Service, Inc. v. Marc Grebow / PrivacyProtect.org
Claim Number: FA2005001896015
Complainant is Scientific Specialties Service, Inc. (“Complainant”), represented by Mark Maneche, Maryland, USA. Respondent is Marc Grebow / PrivacyProtect.org (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <scispec.com> and <glassvials.com> (the “Disputed Domain Names”), registered with GoDaddy.com, LLC (the “Registrar”).
The undersigned certifies 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.
Lynda M. Braun (Chair), Kendall Reed and Judge John Upchurch as Panelists.
Complainant submitted a Complaint to the Forum electronically on May 12, 2020; the Forum received payment on May 12, 2020.
On May 14, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <scispec.com> and <glassvials.com> Disputed Domain Names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the Disputed Domain Names. The Registrar 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 May 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2020 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@scispec.com, postmaster@glassvials.com. Also on May 20, 2020, 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.
A timely Response was received and determined to be complete on June 11, 2020.
On June 17, 2020, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Lynda M. Braun (Chair), Kendall Reed and Judge John Upchurch as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the Disputed Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the SCI SPEC trademark in the United States Patent and Trademark Office (“USPTO”), United States Registration No. 5077233, registered on November 8, 2016 in international class 9, with a date of first use in commerce of December 31, 1981. The website “www.scispec.com” has represented the business interests and web address of Complainant since 1995. The Disputed Domain Name resolves to a redirected page and the Complainant no longer receives any emails related to the business because Respondent has hijacked those emails. Complainant owns the GLASS VIALS common law trademark, which it has used for twenty years. The website “www.glassvials.com” has represented the business interests and web address of Complainant since 2000. The Disputed Domain Name resolves to a redirected page and the Complainant no longer receives any emails related to the business because Respondent has also hijacked those emails. The Disputed Domain Names have been used on Complainant’s catalogs, letterhead, product labels and other promotional materials for many years. In 2003, Complainant acquired a glass vial manufacturing facility in Maryland named Glass Vials, under which the Complainant currently does business.
Respondent has no rights or legitimate interests in respect of the Disputed Domain Names since they were owned by Complainant for years. Respondent was previously a partner (and brother) of Complainant, responsible for managing Complainant’s IT Department. One of his jobs was to keep current the domain names and websites owned by Complainant. Respondent paid the Registrar for renewal of the domain names and was reimbursed by Complainant. Respondent was supposed to have registered the Disputed Domain Names for the benefit of Complainant but instead, without authorization, registered the Disputed Domain Names in his own name and held the Disputed Domain Names hostage when the business relationship between the partners/brothers broke down. Respondent was discovered embezzling from a related company and when Respondent was ordered to stay away from the companies, he retaliated by shutting down the servers and redirecting emails sent to the website to himself, which he wouldn’t return to Complainant. Legal cases ensued and Respondent still refused to turn over the Disputed Domain Names to Complainant.
Respondent registered and used the Disputed Domain Names in bad faith. Respondent, after being caught embezzling from a related company, turned his administrative role of managing Complainant’s domain names into a weapon to retaliate and attempt to extract a cash settlement from Complainant. On March 31, 2020, Respondent began to redirect to himself the emails sent to the websites to which the Disputed Domain Names resolved to harm Complainant and its employees. The redirected emails included employee records, 401k information, health insurance records, financial records, and correspondence from suppliers, customers, and potential customers. These actions by Respondent were indicative of bad faith. In addition, Complainant contends that Respondent’s conduct coincides with the COVID pandemic, a time financially devastating to Complainant. Complainant further contends that its products, particularly glass vials, are essential to the recovery effort and could be manufactured by Complainant to provide continued employment to its employees.
B. Respondent
The Disputed Domain Names have always been under the ownership and control of Respondent. Respondent contends that he always had a legitimate interest in the Disputed Domain Names. Respondent claims that his registration of the Disputed Domain Names predated Complainant’s SCI SPEC registered trademark and contends that Complainant was unable to receive a trademark registration for GLASS VIALS because it is a generic mark. Respondent denies that he managed domain names for Complainant. Instead, he claims that he had no formal computer training and that Complainant always retained a third party to do its computer work and that Respondent hired that party. Respondent claims he was never reimbursed for the Disputed Domain Names’ registration or renewals. Respondent claims that he registered the <scispec.com> and <glassvials.com> Disputed Domain Names and that he permitted Complainant to use them at no cost. Pursuant to court proceedings that Complainant commenced to gain control of the Disputed Domain Names, the case was settled and dismissed with prejudice. In the settlement, Respondent’s shares of Complainant were surrendered in exchange for a cash payout, which, according to Respondent, did not include Complainant’s assets, specifically, the Disputed Domain Names.
Respondent contends that he did not register or use the Disputed Domain Names in bad faith. He denies having ever embezzled anything from a related company and further denies any other bad faith conduct related to his ownership of the Disputed Domain Names. Finally, Respondent contends that his brother, the Complainant in this proceeding, is attempting to destroy his reputation and claims that Complainant’s contentions are all false.
C. Additional Submissions
The Respondent submitted several additional documents as follows:
· Memo to Counsel with the opinion of the United States District Court, District of Maryland, dated November 9, 2016.
· Order of the United States District Court, District of Maryland, dated November 9, 2016.
· Email dated June 1, 2020 from Respondent to the Forum, asking whether Respondent needed to proceed with the UDRP case since the Court had awarded the Disputed Domain Names to Respondent. Respondent further requested additional time to retain an attorney.
· Court papers from Respondent’s summary judgment motion in the Baltimore County District Court, including the Court docket and Court transcript of the hearing on the motion.
These submissions did not comply with Supplemental Rule 7.
Complainant is a company founded in 1963 on the principle of providing quality products to research and industry, particularly the laboratory market. Complaint primarily provides for order and shipping through its website and catalog containers, including, but not limited to, glass jars, glass vials, glass bottles, and tubing. Complainant invested in a glass vial manufacturing facility doing business as Glass Vials with Respondent’s prior knowledge.
The Panel finds that Complainant holds protectable common law and registered trademark rights in the SCI SPEC trademark and common law rights in the GLASS VIALS trademark. The term “trademark or service mark” as used in the UDRP encompasses both registered and unregistered marks. The Panel further finds that the Disputed Domain Names are confusingly similar, indeed almost identical, to Complainant’s SCI SPEC and GLASS VIALS trademarks. Moreover, Complainant has established that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Names and that Respondent registered and is using the Disputed Domain Names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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
The first issue here is whether Complainant has protectable rights in the SCI SPEC and GLASS VIALS trademarks. The second issue is whether at the time the Disputed Domain Names were registered the SCI SPEC and GLASS VIALS trademarks had acquired sufficient distinctiveness through use and marketing sufficient to identify the source of the services with Complainant.
The Panel concludes that Complainant has protectable rights in the SCI SPEC and GLASS VIALS trademarks. Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Complainant also has common law trademark rights in both trademarks. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.1 (“[t]he term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law marks”.). Therefore, the fact that Complainant did not have a registered trademark prior to Respondent’s registration of the Disputed Domain Names for the SCI SPEC and GLASS VIALS trademarks -- only common law trademarks -- does not preclude a finding that it has established trademark rights in those domains.
The Panel concludes that Complainant has provided adequate grounds for a finding that it holds acquired distinctiveness and significant goodwill to have established common law trademark rights in both trademarks based on Complainant’s submissions that include its assorted promotional materials. It is well-established that “[u]se of a mark in commerce and marketing, including displaying the mark prominently on a company website, is evidence of common law trademark ownership [and] the UDRP recognizes and protects common law trademarks.” See BlackBerry Limited v. Bryan Fan, WIPO Case No. D2015-0464.
The Panel further concludes that the Disputed Domain Names are confusingly similar, if not identical, to the SCI SPEC and GLASS VIALS marks under Policy ¶ 4(a)(i). The Disputed Domain Names incorporate Complainant’s marks in their entirety, merely adding the “.com” generic Top-Level Domain (“gTLD”). The addition of a gTLD such as “.com” is insufficient to avoid confusing similarity under Policy ¶4(a)(i). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the addition of the generic Top-Level Domain “.com” to a domain name that incorporates a registered trademark in its entirety does not prevent the domain name from being deemed confusingly similar to a domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Rights or Legitimate Interests
In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Here, the Panel holds that Complainant has made out a prima facie case that Respondent has not effectively refuted. The Panel finds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. Registration of a domain name by a respondent on behalf of a complainant and kept for itself does not establish rights and legitimate interests in the registering party under Policy ¶ 4(c)(ii). See Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant). Complainant did not authorize, license or otherwise permit Respondent to use the Disputed Domain Names. Respondent used the Disputed Domain Names first to resolve to error pages, and currently to resolve to the Registrar’s parking pages. Based on the use made of the Disputed Domain Names, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Names. Moreover, the Respondent has not made use of, or demonstrable preparations to use the Disputed Domain Names or names corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services.
Further, as previously mentioned, Respondent uses the Disputed Domain Names to hijack emails and shut down the webpages used by Complainant. Illegal or fraudulent use of a disputed domain name is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) or (iii). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
Registration and Use in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent's bad faith registration and use, both of which must be proven by Complainant to prevail under this element. See Policy ¶ 4(a)(iii).
Registration in Bad Faith
Under the Policy, registration in bad faith occurs when a respondent is instructed to register a domain name on behalf of a complainant but then chooses to register that domain name in its own name. That is precisely what occurred in the present case. Respondent’s conduct here is akin to that of the respondent in Athena Infonomics India Private Limited v. Registration Private, Domains By Proxy, LLC / Renji Mathew, WIPO Case No. D2017-1779 and amounts to registration of the Disputed Domain Name in bad faith.
In Athena Infonomics, the Panel transferred the domain name to Complainant when it found that the complainant engaged respondent to register and maintain a domain name on the complainant's behalf and provide related hosting services. Later, the respondent refused to transfer the domain name without compensation even though complainant had previously paid respondent for the registration expenses. See also Sanford Winery Company v. Matt Geiser, WIPO Case No. D2008-0210: (“Respondent was acting as Complainant’s agent in the registration of the domain name at issue and was to have registered the domain name in Complainant’s name. Respondent in fact registered the domain name at issue in his own name and has refused numerous requests to transfer the domain name to Complainant. This has long been held to be registration in bad faith…”); GMI Sound Corporation v. Fitzpatrick Brothers Studios, WIPO Case No. D2005-0204: (“Complainant asserts without contradiction that Respondent was hired to register the disputed domain name on Complainant’s behalf, but kept the registration for itself. Thus, bad faith registration is established.”); Landmark Screens, LLC v. Jay Scheibe / Ixzar, Inc., FA1906001849356 (Forum Aug. 6, 2019) (registration in bad faith is found when a respondent is instructed to register a domain name on behalf of a complainant but then chooses to register that domain name in its own name).
Thus, the Panel concludes that the present case falls into this category of cases in which a disputed domain name was registered by an individual or entity on behalf of a complainant. The Panel finds that Respondent registered the Disputed Domain Names in his own name, instead of in Complainant’s name as instructed and agreed upon. Respondent was a partner and brother of Complainant and thus knew of Complainant’s prospective business plans, including Complainant’s impending trademark applications corresponding to the Disputed Domain Names, as well as the then forthcoming acquisition of the glass vial manufacturing facility. At that time, the brothers’ relationship was deteriorating and thus, Respondent could well have had bad intentions when registering the Disputed Domain Names.
The Panel also relies on WIPO Overview 3.0, section 3.8.2 for the proposition that Respondent registered the Disputed Domain Names in bad faith. The section states that “in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.” As described above, this is true given the circumstances of this case.
Use in Bad Faith
The Panel concludes that Respondent is also using the Disputed Domain Names in bad faith since Respondent’s only use of the Disputed Domain Names is to hold the names hostage and redirect the websites and emails to Respondent in an attempt to harm Complainant and its employees. Use of a disputed domain name to disrupt a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)).
Here, Complainant’s emails that contain information about suppliers and customers as well as employee health insurance and financial records are being hijacked by Respondent, which is emblematic of use in bad faith.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <scispec.com> and <glassvials.com> Disputed Domain Names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun (Chair), Kendall Reed and Judge John Upchurch, Panelists
Dated: June 24, 2020
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