MSI Holdings, LLC v. Richard Hicksted
Claim Number: FA1410001586282
Complainant is MSI Holdings, LLC (“Complainant”), represented by William S. Hilton of Pergament Gilman & Cepeda LLP, New Jersey, USA. Respondent is Richard Hicksted (“Respondent”), represented by Michael J. Morrison, Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <speclabsinc.com> and <speclabscorp.com>, registered with GoDaddy.com, LLC.
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.
Honorable Karl V. Fink, (Ret.)., Professor Emeritus Jeffrey M. Samuels and The Honourable Neil Anthony Brown QC (Chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2014; the National Arbitration Forum received payment on October 22, 2014.
On October 23, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <speclabsinc.com> and <speclabscorp.com> 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 October 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 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@speclabsinc.com, postmaster@speclabscorp.com. Also on October 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 November 24, 2014.
A timely Additional Submission was received from Complainant on December 1, 2014.
A timely Additional Submission was received from Respondent on December 8 , 2014.
The Panel received both of the above Additional Submissions and has taken them into account in reaching its decision.
On December 2, 2014 pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink, (Ret.), Professor Emeritus Jeffrey M. Samuels and The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns the SPEX mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,312,902), registered Jan. 8, 1985).
2. Complainant uses the SPEX mark in connection with inorganic chemicals and chemical standards, as well as for laboratory and testing instruments and equipment.
3. The <speclabsinc.com> and <speclabscorp.com> domain names are confusingly similar to the SPEX mark as the names incorporate a derivative of Complainant’s mark. The added term “lab” represents the goods/services that are commonly associated with Complainant’s mark, and use relating to chemical and laboratory products.
4. Respondent lacks any rights or legitimate interests in the disputed domain names. Respondent has not acquired any trademark rights in the disputed domain names and is not commonly known by any of the subject names. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Prior to notice from Complainant, Respondent resolved the disputed domain names to a parked page which advertised the opportunity to purchase the domain name. Subsequent to notice, Respondent resolved the domain names to a website featuring advertisements and click through links, some of which serve as a portal to chemical products and/or laboratory equipment and service information.
5. Respondent has engaged in bad faith use and registration. Respondent is interfering with Complainant’s business as the disputed domain names are distracting users searching for Complainant. Emblematic of Policy ¶ 4(b)(iv) bad faith, Respondent has attempted to mislead Internet users as to Complainant’s affiliation with the disputed domain names, and Respondent seeks to commercially profit from the resulting confusion and click-through links featured at the resolving pages. Respondent cannot find cover arguing that the disputed domain names were parked by a third-party.
Respondent acquired the disputed domain names with actual and/or constructive knowledge of Complainant’s mark. Respondent’s previously inactive holding of the domain names supports a finding of bad faith.
B. Respondent
1. The <speclabsinc.com> and <speclabscorp.com> domain names are not confusingly similar to the SPEX mark. “Spec” is not a derivative of the SPEX mark. The dominant element of the disputed domain names is “speclabs.”
2. Respondent should be considered as having rights and legitimate interests in the disputed domain names. The disputed domain names are comprised of terms highly descriptive of the precise nature of the services and business to be engaged in by Respondent. The disputed domain names are part of the development of a high-technology laboratory business plan. Respondent has not yet offered goods and services via the domain names, but has engaged in extensive work in preparation for the opening of a laboratory in the State of Nevada and did so prior to receipt of the notice for this dispute. Respondent has applied for the necessary licenses and permits to engage in the business of providing high-technology laboratory services. Respondent has also entered into a lease for the building for the laboratory. Respondent intended to populate the disputed domain names as soon as he obtained the requisite laboratory license. As such, Respondent has made demonstrable preparation to engage in the bona fide offering of goods and services to the public via the subject domain names.
3. Respondent did not acquire the disputed domain names with actual knowledge of Complainant. Further, Respondent has not engaged in a passive holding of the disputed domain names, but rather had acquired the names in anticipation of opening his laboratories. Respondent had no intention of exploiting Complainant’s goodwill.
C. Additional Submissions
Complainant.
Complainant made the following further contentions.
1. Complainant reiterates that the added term “labs” describes the SPEX mark, thereby increasing the likelihood for confusion.
2. Respondent’s contentions that it intends to use the disputed domain names to develop a high-technology laboratory business plan lacks sufficient evidentiary support. Respondent has failed to provide any documents that might support these allegations. The two Nevada business entities discussed by Respondent, namely Specifications Laboratory Corp. and Specifications Laboratory Nevada, LLC are owned, organized, and lead by a Michael J. Morrison, not Respondent. There is no indication that Respondent is affiliated with the business entities. These corporate filings cannot serve to show Respondent is commonly known by the domain names, especially given the disparity between the domain names and the entity names.
Respondent
Respondent made the following further contentions.
(A) Identical and/or Confusing Similarity
There is an obvious and undeniably distinct aural difference between SPEX and <speclabsinc.com> and <speclabscorp.com> that is not confusingly similar. There is also a visual difference between the mark SPEX and the Domain Names speclabsinc.com and speclabscorp.com which makes the Domain Names distinctly dissimilar, and not confusingly similar with the mark SPEX.
(B) Rights or Legitimate Interests
1. As the timeline chronology submitted by Respondent has been criticised by Complainant, Respondent replies that the chronology he prepared presents compelling demonstrable preparations to engage in the bona fide offering of goods and services to the public, using the subject Domain Names. Respondent has, therefore, provided factually and legally cognizable evidence of his rights and legitimate interests in the subject domain names.
2. In particular, Complainant’s additional submission asserts that Respondent does not own the two registered Nevada business entities: Specification Laboratory Corp. and Specifications Laboratory Nevada, LLC merely because Respondent’s name is not listed on the Nevada business registry.
As an attorney licensed in the States of Nevada and California, and the District of Columbia, the undersigned represents and declares, as an officer of the Court, that Respondent Richard Hicksted is the sole owner of 100% of all equity in both of the subject business entities.
The Panel has found that a case has not been made out to establish the three criteria in paragraph 4 (a) of the Policy.
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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used in bad faith.
The first question that arises is whether Complainant has a trade or service mark on which it can rely. Complainant relies on the SPEX mark it uses in connection with inorganic chemicals and chemical standards, as well as for laboratory and testing instruments and equipment. Complainant claims to own the SPEX mark through registration with the USPTO (Reg. No. 1,312,902), registered Jan. 8, 1985), and subsequent assignment. See Compl., at Attached Exs. 1-2. The Panel agrees that Complainant’s valid registration with the USPTO for the SPEX mark sufficiently demonstrates Complainant’s Policy ¶ 4(a)(i) rights in the mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); Remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment).
The second question that arises is whether the disputed domain names are identical or confusingly similar to the SPEX mark on which Complainant relies. Complainant argues in support that the <speclabsinc.com> and <speclabscorp.com> domain names are confusingly similar to the SPEX mark as the names incorporate a derivative of Complainant’s mark, the substitution of the “x” in SPEX for a “c” fails to distinguish the resulting domain names from the mark and the added term “labs” is descriptive of the SPEX mark as Complainant operates within the laboratory setting, thereby increasing the likelihood for confusion.
Clearly the domain names are not identical to the trademark. The question whether they are confusingly similar to it depends on whether an objective bystander, presented with the domain names and the trademark, would find them confusingly similar. The Panel concludes that they are not confusingly similar and would not be seen as such by an objective bystander. The internet user would probably have some initial resistance in deciding that the domain names were confusingly similar as the user would first need to form an opinion as to what the domain names actually meant, for their meaning is not immediately apparent. Some observers may well find them simply a random collection of letters rather than containing specific words that are easily understood. But a user who pondered over the domain names would probably conclude that they were invoking the notion of a laboratory dealing with the making or repair of what are popularly known as “specs”, namely spectacles, and in the case of one domain name would regard it as referring to a spectacle laboratory that was an incorporated entity and in the case of the second would regard it as referring to a spectacle laboratory company. The Panel is unable to see how any other meaning could reasonably be given to the domain names. And, while it is true as Complainant submits, that the addition of generic and descriptive terms, such as labs and inc., usually do not avoid a finding of confusing similarity, such terms cannot be simply disregarded in the present analysis, as they go to make up the whole domain name and hence to giving it a meaning. When the terms indicating entities engaged in the spectacle laboratory industry are included, the Panel is in effect being asked to conclude that <speclabsinc.com> and <speclabscorp.com> invoke or refer to, or might be thought to be referring, not to what they plainly mean, but to something entirely different, namely the trademark SPEX, which has no apparent meaning, is pronounced differently and spelled differently from the trademark, has no obvious connection with it and where no clue is given as to why the domain names should be referring to the trademark. Added to this is the fact that, although the Panel readily accepts the achievements and significance of the work of Complainant, its alleged fame is not supported by evidence and may not be as extensive as has been submitted; there is therefore no immediate reason why the domain names should lead to any confusion with the trademark.
Accordingly, the Panel finds that the <speclabsinc.com> and <speclabscorp.com> domain names are not confusingly similar to the SPEX trademark.
Complainant has thus not made out the first of the three elements that it must establish.
That being so, the Panel would not normally express opinions on the remaining issues in the case. But as the parties have gone to great lengths to develop further arguments, the Panel believes that some brief commentary on those issues is appropriate.
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 name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Applying those principles, the Panel finds that Complainant has not made out a prima facie case.
It is true that Complainant has made out some of the facts that a panel would expect to be made out under this element. Thus, it would appear that Respondent is not commonly known by any of the subject domain names. The Panel notes that the WHOIS information lists “Richard Hicksted” as registrant. The Panel has examined the evidence carefully but finds that there is insufficient evidence to deem Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). In addition, Respondent has no rights in the SPEX mark and was not licensed or otherwise permitted by Complainant to use Complainant’s SPEX mark in any manner, including not in any domain name.
However, on the other and by far the more substantial grounds raised in the evidence, the Panel concludes that Complainant has not made out a prima facie case.
First, based on the Response, the sworn declaration of Respondent and its Additional Submission, all of which are in evidence, the Panel finds that Respondent has rights or legitimate interests in the domain names based on his preparations to use the domain names in connection with his proposed business, within the meaning of paragraph 4(c) of the Policy. Respondent explains that the disputed domain names are part of the development of a high-technology laboratory business plan, and that the disputed domain names are comprised of terms highly descriptive of the precise nature of the services and business to be engaged in by Respondent. Respondent notes that he has not yet offered goods and services via the domain names, but has engaged in extensive work in preparation for the opening of a laboratory in the State of Nevada and did so prior to Respondent’s receipt of notice of this dispute. Respondent adds that he has applied for the necessary licenses and permits to engage in the business of providing high-technology laboratory services, and has also entered into a lease for the building for the laboratory. Respondent asserts that he intended to populate the disputed domain names as soon as he obtained the requisite laboratory license. See Resp., at Attached Ex. 1.
Complainant attacked the nature and weight of the evidence adduced by Respondent to this effect, to show that Respondent did not have a genuine intention to use the domain names for that legitimate purpose. In particular, it sought to cast doubt on the legitimacy of Respondent’s alleged preparations according to Nevada law. The Panel finds it unnecessary to go into detail on this issue, suffice it to say that Respondent has clearly gone beyond a mere aspiration to start the business described and has taken some identifiable and concrete steps to do so. As such the Panel finds that Respondent has taken demonstrable preparations within the meaning of paragraph 4(c) of the Policy to use the domain names in connection with the bona fide offering of goods and services that is encompassed by his proposed high-technology laboratory business plan., See AutoNation Holding Corp. v. Alawneh, D2002-0058 (WIPO May 1, 2002) (finding that, prior to having received notice of the dispute, the respondent had made demonstrable preparations to use the disputed domain name by submitted “substantial, overwhelming and undisputed evidence” of those preparations); see also Jolt Co. v. Digital Milk, Inc., D2001-0493 (WIPO Aug. 1, 2001) (holding that the respondent’s submission of an extensive and elaborate business plan demonstrating the respondent's preparation to use the domain name in connection with a bona fide offering of goods or services was sufficient to establish a legitimate interest in the disputed domain name).
Secondly, it must be remembered that the domain names encompass generic terms and Respondent has argued, in accordance with the well known principle, that as they are generic terms, he has the right to register and use them in his domain names if he does not trade on a trademark or target a trademark owner or its business and provided that he uses the domain names within their generic meaning. The Panel accepts the substance of that case advanced by Respondent; the domain names consist of several words all of which are generic, and Respondent seems never to have singled out Complainant, sought to identify it or targeted its business by trying to confuse internet users; as noted above, it is far more likely than not that few if any internet users would think the domain names were referring to Complainant or its business at all and there is none of the usual evidence to show that Complainant was as well known or famous as has been submitted. The Panel therefore finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields.
Accordingly, Complainant has not made out a prima facie case that Respondent does not have a right or legitimate interest in the disputed domain names. Even if a prima facie case were made out on the above evidence, that case was rebutted and the Panel finds that Respondent has a right or legitimate interest in the disputed domain names.
Complainant has thus not made out the second of the three elements that it must establish.
The Panel also finds that a case has not been made out that the domain names were registered and used in bad faith. On the evidence in total, particularly the declaration of Respondent, to the effect that it had not heard of the SPEX trademark prior to the filing of the Complaint, and the lack of evidence such as sales or advertising expenses to show that Complainant was famous, there is nothing to indicate a bad faith intent on the part of Respondent.
The evidence does not make out any of the requirements of paragraph 4(b) of the Policy and accordingly this matter does not fall within any of the specified cases of bad faith registration and use. Respondent has not registered or used the <speclabsinc.com> and <speclabscorp.com> domain names in bad faith as the Panel finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Nor does the evidence bring the case within the generally understood meaning of bad faith. In that regard, the Panel has held that Respondent has rights or legitimate interests in the <speclabsinc.com> and <speclabscorp.com> domain names pursuant to Policy ¶ 4(a)(ii). It follows from that finding that Respondent could not have registered or used them in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Moreover, as the Panel has noted in the previous section of this decision, the domain names encompass generic terms and Respondent has the right to register and use them in his domain names if, as has been supported by the evidence, he does not trade on a trademark or target a trademark owner or its business and provided that he uses the domain names within their generic meaning. Again, the evidence in this respect does not indicate bad faith motivation.
In addition, Respondent submits and supports by evidence that the Panel accepts, that it did not acquire the disputed domain names with actual knowledge of Complainant, and that Respondent had no intention of exploiting Complainant’s goodwill. Further, Respondent submits that it has neither engaged in a passive holding of the disputed domain names nor wished to sell the domain names, but rather had acquired the names in anticipation of opening his laboratories. See Resp., at Attached Ex. 1. The Panel accepts those submissions and the evidence on which they are based and determines that Respondent did not register the disputed domain names in bad faith as it did not target Complainant at the time of registration, but instead intended to use the disputed domain name in connection with high-technology laboratory services. See Asphalt Research Tech., Inc. v. Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (finding that the complainant had failed to prove that the <ezstreet.com> domain name was registered and used in bad faith because of the short window of time between the domain name registration and the filing of the complaint and the lack of a compelling reason to doubt the respondent’s plan to develop the resultant website); Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner.”).
Accordingly, the Panel finds that Respondent did not register and use the disputed domain names in bad faith.
Complainant has thus not made out the third of the three elements that it must establish.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <speclabsinc.com> and <speclabscorp.com> domain names REMAIN WITH Respondent.
Honorable Karl V. Fink, (Ret.)., Professor Emeritus Jeffrey M. Samuels and The Honourable Neil Anthony Brown QC (Chair)
Panelists
Date: January 5, 2015
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