Safe-Guard Products International, LLC v. Kamisha Daniel
Claim Number: FA2107001955360
Complainant is Safe-Guard Products International, LLC (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Kamisha Daniel (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <safeguardsolutions.com>, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 15, 2021; the Forum received payment on July 15, 2021.
On July 16, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <safeguardsolutions.com> 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 July 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2021 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@safeguardsolutions.com. Also on July 20, 2021, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2021 the Forum received an email from an individual claiming that he was authorized by Respondent to communicate in this case and request an extension of the deadline to submit a Response.
On August 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
On August 17, 2021, the Panel issued an Order For Extending Time For Submitting A Response And Rendering A Decision in which Respondent was given a new deadline of August 23, 2021 by which to submit a Response. No Response or other communication by or on behalf of Respondent has been received.
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 name be transferred from Respondent to Complainant.
A. Complainant
Founded in 1992, Safe-Guard Products International (“SGPI”) is a leading United States provider and administrator of vehicle protection service plans and related products. It has marketed its vehicular finance and insurance products under the SAFE-GUARD mark, and its online home is <safe-guardproducts.com>. Complainant has rights in the trademark SAFE-GUARD through its use in commerce for a number of decades and its registration of the mark with the United States Patent and Trademark Office (USPTO) on July 19, 2011. The Respondent’s use of the <safeguardsolutions.com> domain name, registered on May 1, 2011, is identical or confusingly similar to Complainant’s SAFE-GUARD mark, as it incorporates the mark in its entirety, only removing the hyphen and adding the word “solutions” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <safeguardsolutions.com> domain name. Complainant did not authorize Respondent to use the SAFE-GUARD mark nor is Respondent commonly known by the name “Safeguard Solutions.” Respondent further fails to use the disputed domain name in connection with a bona fide offering of goods and services and it does not make a legitimate noncommercial or fair use thereof as Respondent is offering services that directly compete with Complainant’s services.
Respondent registered and uses the <safeguardsolutions.com> domain name in bad faith. The Respondent is using the domain name to disrupt the Complainant’s business, had actual knowledge of Complainant’s marks, and failed to respond to two cease-and-desist letters from Complainant’s lawyers.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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.
In view of Respondent's failure to submit a formal response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations and evidence 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 and supported 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”).
Complainant asserts rights in the SAFE-GUARD mark through its use in commerce and its registration of the mark with the United States Patent and Trademark Office (USPTO). Registration of a mark with the USPTO is sufficient to establish rights to the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Complainant submits copies of two of its USPTO registration certificates for the SAFE-GUARD mark. Therefore, the Panel finds that Complainant has demonstrated rights in its asserted mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <safeguardsolutions.com> domain name is confusingly similar to Complainant’s SAFE-GUARD mark as it contains the mark in its entirety, removes the hyphen, and merely adds the word “solutions” and the “.com” gTLD. Simply omitting or removing a hyphen does not suffice to differentiate a domain name from an asserted trademark and therefore does not avoid confusing similarity under Policy ¶ 4(a)(i). See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark). Furthermore, the addition of a generic or descriptive term and a gTLD generally fails to sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 18, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).”); see also Microsoft Corporation v. Thong Tran Tranh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and a top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). As the omission of a hyphen and the addition of the word “solutions” does not distinguish the <safeguardsolutions.com> domain name from Complainant’s SAFE-GUARD mark, the Panel finds that it is confusingly similar to the mark per Policy ¶ 4(a)(i).
Complainant
must first make a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Should it succeed in this effort, the burden then shifts to Respondent to show
that 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”).
Complainant contends that Respondent lacks rights or legitimate interests in the <safeguardsolutions.com> domain name because Respondent is not authorized to use the SAFE-GUARD mark and is also not commonly known by the disputed domain name. WHOIS information may be used to inform the determination of whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the dispute domain names when the identifying information provided by WHOIS record was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information for the disputed domain name, as provided to the Forum by the Registrar, lists the Registrant as “Kamisha Daniel.” While Respondent’s website does display a banner and refer to itself as SAFEGUARD, Respondent has not filed a Response or made any other submission in this case to refute Complainant’s claim of trademark misuse. As such, the Panel finds insufficient evidence upon which to conclude that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services, nor is it making a legitimate noncommercial or fair use thereof. Pursuant to Policy ¶¶ 4(c)(i) and (iii), past panels have concluded that a Respondent’s use of the disputed domain name to offer competing services is not a bona fide offering of goods or services nor does it demonstrate a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the website at the disputed domain name, which displays a SAFEGUARD logo that is graphically similar to Complainant’s SAFE-GUARD logo. Further, the website offers vehicle protection service plans that appear to compete directly with those offered by Complainant. Because the Respondent offers competing services using a confusingly similar domain name, the Panel finds that the Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
In light of the arguments and evidence presented, the Panel finds that Complainant has made a prima facie case which has not been rebutted by Respondent. Thus, by a preponderance of the evidence in this case, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant claims that Respondent had actual knowledge of the SAFE-GUARD mark when registering the disputed domain name. Complainant contends that because Respondent incorporates Complainant’s mark in its entirety to offer competing services, it may be presumed that Respondent had actual knowledge of Complainant’s rights. Actual knowledge of a complainant’s rights in a domain name can be shown when the disputed domain name is used to offer competing services. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”); see also Google Inc. v. Ahmed Humood, FA 1591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Here, Respondent uses the Complainant’s mark in its entirety and to offer directly competing services. It further uses a graphic logo that bears some resemblance to that used by Complainant. Respondent has not appeared in this case to explain its position despite numerous attempts at communication by Complainant and the Forum. Based on the available evidence, the Panel finds it highly likely that Respondent’s use of the domain name indicates an actual prior knowledge of Complainant’s rights.
The Panel also notes that the disputed domain name was first created on a date that precedes the date on which Complainant’s USPTO registrations issued. However, it has been noted that when considering the relative dates of a complainant’s trademark rights and any rights that may be possessed by a respondent, “[t]he operative date is the date when Respondent acquired the disputed domain name (assuming the Respondent is not a successor in interest to the previous domain name owner).” DIRECTV, Inc. v. Toshi Amori, FA 1394254 (Forum July 28, 2011). The evidence here indicates that on May 2, 2018, the disputed domain name was owned by an individual with a different name and using different WHOIS information than Respondent (i.e., postal address, email, phone) and that the domain name had expired on May 1, 2018. There is no evidence to suggest that there is a relationship between Respondent and this prior owner or that Respondent is a successor in interest thereto. Based on this evidence, the Panel concludes that the disputed domain name was acquired by the present Respondent at some time after the date on which Complainant’s trademark rights came into existence.
Complainant goes on to assert that Respondent registered and uses the disputed domain name in bad faith because it disrupts Complainant’s business. Offering competing services under a confusingly similar domain name typically disrupts a complainant’s business in such a way that it evidences bad faith registration and use under Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also ZIH Corp. v. ou yang lin q, FA 1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). The Panel notes that Complainant’s screenshot of Respondent’s website shows that it features a confusingly similar mark and graphic logo and it offers competing automotive service plans for commercial gain. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant argues that Respondent acted in bad faith because Respondent did not respond to Complainant’s cease-and-desist letters. The failure to respond to a cease-and-desist letter can, in light of other circumstances surrounding a case, support a finding of bad faith under Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides screenshots of two cease-and-desist letters sent on June 2, 2021 and June 21, 2021 to two different California addresses listed for Respondent. It claims that Respondent never replied to either of these. In view of all of the facts of this case, including Respondent’s failure to submit a Response after being granted additional time to do so, the Panel finds that Respondent’s failure to respond to Complainant’s cease-and-desist letters does lend further support to its above conclusions that Respondent acted in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <safeguardsolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 24, 2021
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