Samson Protection Services LLC v. Jason Veney
Claim Number: FA2005001897264
Complainant is Samson Protection Services LLC (“Complainant”), represented by J. Kevin McIntyre, Maryland, USA. Respondent is Jason Veney (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <samsonprotectionservices.com>, <samsonprotectionservice.com>, <samsonprotectionservices.net>, <samsonprotectionservices.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 21, 2020; the Forum received payment on May 21, 2020.
On May 22, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <samsonprotectionservices.com>, <samsonprotectionservice.com>,<samsonprotectionservices.net>, and <samsonprotectionservices.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 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@samsonprotectionservices.com, postmaster@samsonprotectionservice.com, postmaster@samsonprotectionservices.net, postmaster@samsonprotectionservices.org. Also on May 27, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Samson Protection Services LLC, is a security guard company. Complainant asserts rights in the SAMSON PROTECTION SERVICES mark through its various uses in marketing and business materials.
Complainant contends that it was incorporated on or about April 26, 2017. When the domain names were registered it was known and was the intention of Complainant that its mark would be SAMSON PROTECTION SERVICES as that would reflect the name of Complainant.
Respondent’s<samsonprotectionservices.com>, <samsonprotectionservice.com>, <samsonprotectionservices.net>, and <samsonprotectionservices.org> domain names are identical to Complainant’s name and service mark.
Respondent lacks rights or legitimate interests in the <samsonprotectionservices.com>, <samsonprotectionservice.com>, <samsonprotectionservices.net>, and <samsonprotectionservices.org> domain names. Respondent was a former member of Complainant’s business. Complainant also formerly owned the disputed domain names.
Respondent registered and uses the <samsonprotectionservices.com>, <samsonprotectionservice.com>, <samsonprotectionservices.net>, and <samsonprotectionservices.org> domain names in bad faith. Specifically, Respondent attempts to sell the disputed domain names to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is engaged in business as a security guard company.
2. Respondent was a former member, Secretary and vice-president of Complainant and an employee of Complainant’s business.
3. Complainant has established its common law trademark rights in the SAMSON PROTECTION SERVICES mark through its various uses of the mark in marketing and business materials.
4. Respondent registered and acquired the disputed domain names at or about the time of the incorporation of Complainant and when the SAMSON PROTECTION SERVICE mark was known and used as Complainant’s mark.
5. Respondent renewed the registration thereof on behalf of Complainant, and in his capacity as a member and vice-president of Complainant, establishing that Respondent had no right or legitimate interest in the domain names.
6. Complainant is entitled to own and use the disputed domain names.
7. Respondent registered and used the domain names in bad faith, inter alia by wrongly refusing and failing to transfer them to Complainant other than after payment of a sum of money to him from Complainant and by setting up a competing security guard business.
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.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has common law trademark rights in the SAMSON PROTECTION SERVICE mark. Registration of a trademark is not required in UDRP proceedings when Complainant can demonstrate established common law rights in the mark. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”). To establish common law rights in a name, a complainant generally must show extensive and continuous use in commerce such that consumers have come to associate the mark with the complainant as to the source of the goods. See Iacocca v. Tex. Int’l Prop. Assocs., FA 1088017 (Forum Nov. 29, 2007) (“In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, that consumers have come to associate the mark with Complainant, as to the source of the goods.”). Here, Complainant claims that its business has consistently used the mark since it was organized on April 26, 2017 and the mark has been used on multiple business items and marketing materials. See Compl. Annex 1. Therefore, the Panel finds this as evidence that Complainant has established common law rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s SAMSON PROTECTION SERVICE mark. Complainant submits that Respondent’s <samsonprotectionservices.com>, <samsonprotectionservice.com>,<samsonprotectionservices.net>, and <samsonprotectionservices.org> domain names are identical to the SAMSON PROTECTIONS SERVICES mark. When a disputed domain name incorporates a mark in its entirety and merely makes some minor spelling alterations and adds a generic top-level domain (gTLD), as in the present case, the domain name will be considered as confusingly similar to a mark under Policy ¶ 4(a)(i). See Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the panel should resolve whether a mark is identical or confusingly similar “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s SAMSON PROTECTION SERVICE mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s SAMSON PROTECTION SERVICE trademark and to use it in its domain names, making some minor spelling alterations which do not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the disputed domain names when the SAMSON PROTECTION SERVICE mark was known and used as Complainant’s mark;
(c) Respondent was Secretary and vice-president of Complainant and an employee of Complainant’s business;
(d) Respondent registered and acquired the disputed domain names and renewed the registration thereof on behalf of Complainant, and in his capacity as a member and vice-president of Complainant, establishing that Respondent had no right or legitimate interest in the domain names.
(e) Respondent has wrongly retained the registration of the domain names and used them without the consent or approval of Complainant;
(f) Complainant argues that Respondent does not have rights or legitimate interests in the <samsonprotectionservices.com>, <samsonprotectionservice.com>,<samsonprotectionservices.net>, and <samsonprotectionservices.org> domain names. The evidence establishes that Respondent is a former employee of Complainant’s business and thus no longer holds any rights or legitimate interests in the Complainant’s mark. See Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark). Additionally, Complainant claims that while the disputed domain names were purchased using Respondent’s name, Complainant’s business purchased the names. A domain name only acquired because of a lapse in registration or other opportunistic registration is not enough to give a respondent rights or legitimate interests. See Clark v. HiNet, Inc., FA 405057 (Forum Mar. 4, 2005) (finding that the respondent lacked rights and legitimate interests in the domain name because it failed to respond to the complaint and it “opportunistically” registered the domain name when the complainant inadvertently allowed the registration to lapse). Here, Complainant claims that Respondent registered the domain names on behalf of the company and had no rights or legitimate interests to them outside of his role. Additionally, Respondent was responsible for renewing the domain names when they were about to expire. See Compl. Annex 8-10. Therefore, the Panel finds Respondent lacks rights or legitimate interests in the disputed domain names.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <samsonprotectionservices.com>, <samsonprotectionservice.com>,<samsonprotectionservices.net>, and <samsonprotectionservices.org> domain names in bad faith. Respondent is attempting to sell the domain names to Complainant for $800 and threatened to take down the domain names unless Complainant pays. Intent to sell the disputed domain name can be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Hard Rock Café International (USA), Inc. v. Gameday Tickets, FA1202001428106 (Forum Mar. 20, 2012) (finding that the respondent’s offer to sell the disputed domain name to the complainant is evidence that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i), regardless of that fact that Complainant made the first offer). Additionally, attempting to sell the domain name for excess of out-of-pocket costs suggest bad faith registration and use under Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i). ”). Complainant provides affidavits that explain Respondent’s role in the company, when Respondent broke away from Complainant and that Respondent is demanding payment or else he will shut down the websites. See Compl. Annex 19 -20. The Panel therefore finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(i).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the SAMSON PROTECTION SERVICE mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <samsonprotectionservices.com>, <samsonprotectionservice.com>, <samsonprotectionservices.net>, and <samsonprotectionservices.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 21, 2020
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