Scentco, Inc. v. NULL NULL / SANDFORT
Claim Number: FA1406001565772
Complainant is Scentco, Inc. (“Complainant”), represented by Kevin Costanza of Seed Intellectual Property Law Group PLLC, Washington. Respondent is NULL NULL / SANDFORT (“Respondent”), represented by Brett E. Lewis of Lewis & Lin LLC, New York.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scentco.com>, registered with eNom, Inc.
The undersigned certify 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.
Debrett G. Lyons, Diane Cabell and Houston Putnam Lowry, Chartered Arbitrator, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2014; the National Arbitration Forum received payment on June 20, 2014.
On June 20, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <scentco.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 June 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 2014 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@scentco.com. Also on June 24, 2014, 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 July 14, 2014.
On July 23, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett G. Lyons, Diane Cabell and Houston Putnam Lowry as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
Complainant asserts trademark rights in SCENTCO and alleges that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent does not contest the issue of trademark rights but otherwise broadly denies those allegations.
Respondent asserts a right to and legitimate interest in the disputed domain name because Respondent is a reseller of generic domain names, including the disputed domain name.
Respondent submits that it did not register the disputed domain name in bad faith because at the time of registration it had no knowledge of Complainant or its claim to trademark rights.
Finally, Respondent seeks a finding of reverse domain name hijacking because Respondent asserts that the complaint has been brought in bad faith.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells novelty pillows and stuffed toys by reference to the trademark SCENTCO;
2. Complainant is the proprietor of United States Patent and Trademark Office (“USPTO”): Reg. No. 4,456,277, registered Dec. 24, 2013, filed Sept. 26, 2012 for the word mark SCENTCO;
3. Respondent registered the disputed domain name on February 22, 2001;
4. Respondent is a domain name reseller;
5. The disputed domain name resolves to a website with links to vendors of various goods and services;
6. Complainant has not licensed or otherwise given permission to Respondent to use its trademark or to register any domain name incorporating the trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO trademark registration for SCENTCO the Panel is satisfied it has trademark rights. See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
Panel is also satisfied the disputed domain name is legally identical to Complainant’s trademark. The disputed domain name takes the trademark and merely adds the non-distinctive gTLD, “.com.” See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark).
Whilst Respondent argues registration of the domain name significantly predates Complainant’s use and registration of the trademark, paragraph 4(a)(i) of the Policy has been consistently read such that determination of whether or not Complainant has rights in a trademark is independent of the chronology of the parties’ usage, a matter left for consideration under paragraph 4(a)(ii) and/or (iii).
Panel follows those practices and so finds Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests. See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “NULL NULL / SANDFORT” and so there is no prima facie evidence Respondent might be commonly known by the disputed domain name. There is no evidence Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark.
Panel finds Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
The only live question is whether the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute.
The Respondent first had notice of the dispute on June 24, 2014, the date on which the Forum served the complaint on Respondent. Nothing turns on that date since all relevant events took place much earlier.
So far as the bona fides of Respondent’s conduct is concerned, the domain name was registered on February 2, 2001. Complainant makes no claim to use of the trademark going back to 2001 or earlier and Complainant’s USPTO registration of the trademark shows a claimed a first use in commerce date of October 1, 2013. Accordingly, at the time of registration, Respondent could not have done any meaningful due diligence on the term SCENTCO that would have uncovered Complainant’s interests.
It follows that Respondent has not displayed a “willful blindness” of third-party rights, nor that constructive knowledge (even if such a principle were applied) of such rights should attach to Respondent.
Respondent states that it is a generic domain name reseller, and submits that the sale of domain names containing generic terms is a bona fide offering of goods or services. Many UDRP panels have, in general terms and subject to caveat, agreed with that broad statement. However, the issue is not simply the legitimacy of Respondent’s business model, but whether it has a legitimate interest in the disputed domain name itself.
In that respect, the evidence is ambivalent. Passively holding a domain name for more than a decade does not create rights. Nor, on the evidence, does Respondent’s unrealized “dreams” of offering a mail service using the domain name amount to demonstrable preparations to use the trademark for the purposes of the Policy. Further, the fact that Complainant later came to acquire trademark rights in an all but identical term, after which the resolving website linked to material potentially conflicting with Complainant’s business interests, are all additional considerations Panel feels best discussed in relation to paragraph 4(b) of the Policy and for those reasons which now follow a conclusive finding on paragraph 4(c) of the Policy is not necessary.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
It is unequivocal that, at the time Respondent registered the disputed domain name, it had no knowledge of Complainant or of its trademark. Accordingly, it would be open to the Panel to decline to find bad faith registration and move directly to final decision. See, e.g., U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Nat. Arb. Forum Jan. 17, 2005) (“Without knowledge of Complainant or its claim of right in the mark, it is difficult to see how Respondent could have the specific intent required for it to act in bad faith against the rights of Complainant.”); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.1 (2d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview2.0/#31.
It follows that there is no scope for the application of any of subparagraphs 4(b)(i)–(iii) above which all hinge on bad faith registration but for the argument made by Complainant that Respondent was aware of Complainant and its trademark upon Respondent’s re-registration (renewal) of the disputed domain name. In that regard UDRP panels have in the past considered the questions of whether or not transfer or renewal of a domain name constitutes re-registration for the purposes of paragraph 4(b) and – so far as it exists - the consensus viewpoint has been that transfer might be treated as re-registration but not renewal. See Dixons Group Plc v Mr. Abu Abdullaah, WIPO Case No. D2000-1406; but see contra, Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688.
On the other hand, Policy ¶ 4(b)(iv) hinges on use and requires consideration because the domain name has been used. In that respect there is the plain evidence that the resolving website provided a link to various third party vendors of goods and services, some of which compete in business with Complainant, and that this linking occurred after the trademark became registered and Complainant acquired trademark rights.
Panelists have generally found that a domain name registrant will be deemed responsible for content appearing on a website at its domain name, even if the registrant does not exercise direct control over that content. The Overview of WIPO Panel Views on Selected UDRP Questions, available at http://www.wipo.int/amc/en/domains/search/overview2.0, states at one point:
To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. … Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding respondent bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant's trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present.
See id. at http://www.wipo.int/amc/en/domains/search/overview2.0/#38.
Nonetheless, on the evidence there is nothing which suggests to Panel that Respondent targeted Complainant’s trademark or business either before or after registration of the domain name. Although the evidence undoubtedly reveals instances of conduct which, without more, might be seen as bad faith use, Panel is of the view that this should not negate or outweigh the Respondent’s other bona fide actions and motivations. On the evidence, the Panel finds that Respondent did not register the domain name in bad faith and, on balance, did not use the domain name in bad faith.
Accordingly, Panel finds that none of the per se instances of bad faith use and registration outlined by Policy ¶ 4(b)(i)-(iv) apply. Nor, independently of those scenarios, does Panel find on a balance of the evidence that Respondent registered and then used the domain name in bad faith.
Panel finds that Complainant has failed to establish this third aspect of the Policy.
Reverse Domain Name Hijacking
Panel takes the view that a claim of reverse domain name hijacking is not to be taken lightly. A complainant’s failure to satisfy the Policy is a necessary but not sufficient condition to render a finding of reverse domain name hijacking (see ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”)).
In Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) the panel noted that a finding of reverse domain name hijacking requires bad faith on a complainant’s part, which was not proven because the complainant did not know and could not have known that one of the three elements in Policy ¶ 4(a) was absent. By contrast, in Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) the panel found reverse domain name hijacking where the complainant used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name”.
Complainant cannot, given the way that panelists have interpreted the Policy, be chastised for asserting trademark rights. However, given the vast chasm between the date of Complainant’s asserted first use of its trademark and the date of registration of the domain name, Complainant might have trodden more carefully before asserting that Respondent had no rights.
Other panels have already observed that the business of a domain name reseller is a precarious one where constant vigilance is demanded, but there is nothing in this case to indicate Respondent has had a colourful past or has been involved in prior disputes.
Moreover, there is the especially disturbing claim by Respondent that in 2010 “Chris Cote” (now the president of Complainant) emailed Respondent asking to buy the domain name. While the email was not produced, Complainant failed to deny the claim. On one construction of the evidence it might then be said that, having failed by negotiate purchase of the domain name, Complainant commenced these Administrative Proceedings, indifferent to Respondent’s rights. Such a conclusion suggests an abuse of the process.
Nonetheless, in NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) it was said that “[T]o establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.” Respondent apparently never replied to Complainant’s email.
Panel finds that the outcome of the claim of reverse domain name hijacking might have hinged on the wording of that correspondence but since it is not in evidence the result must be that the claim should not be sustained.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <scentco.com> domain name REMAIN WITH Respondent.
Panel finds Complainant has not engaged in Reverse Domain Name Hijacking.
Debrett G. Lyons
Diane Cabell
Houston Putnam Lowry, Chartered Arbitrator
Dated: August 2, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page