MSI Holdings, LLC v Kobhi N / SpexFix
Claim Number: FA1501001600007
Complainant is MSI Holdings, LLC (“Complainant”), represented by William S. Hilton of Pergament Gilman & Cepeda LLP, New Jersey, USA. Respondent is Kobhi N / SpexFix (“Respondent”), Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spexfix.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2015; the National Arbitration Forum received payment on January 15, 2015.
On January 15, 2015, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <spexfix.com> domain name is 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 January 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2015 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@spexfix.com. Also on January 19, 2015, 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 February 3, 2015.
On February 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kenneth L. Port as Panelist.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that it has registered the famous SPEX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,312,902, registered Jan. 8, 1985). The mark is also registered with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA872958, registered Mar. 14, 2010). Complainant uses the mark in connection with inorganic chemicals, chemical standards for general industrial and laboratory use, and for measuring and scientific instruments. The Complainant points out that the <spexfix.com> domain name contains the mark and adds the generic term “fix” along with the generic top-level domain (“gTLD”) “.com.”
Complainant further alleges that the Respondent has no rights or legitimate interests in the domain name. Respondent is not known by the domain name and never has been licensed to use SPEX in domain names. Before this complaint was filed, the domain name resolved to a parking website wherein Respondent was offering the domain name for sale. See Compl., at Attached Ex. 10. After the filing of this complaint the domain name was no longer offered for sale, but the resolving website is a template page that fails to consist of active use. See Compl., at Attached Ex. 11.
Finally, Complainant alleges that the Respondent has registered and is using the domain name in bad faith. Respondent is disrupting the business of Complainant by intending to divert Internet users to its webpage. Also, Respondent shows an intent to profit from a likelihood of confusion.
B. Respondent
Respondent filed a non-responsive Response in the form of an e-mail communication addressed to the Forum dated February 3, 2015. In it, Respondent claims to have a commercial interest in the <spexfix.com> domain name in that it identifies the specification writing sector in the architectural industry. It failed to rebut the Complainant’s contention that Complainant’s mark is famous and that Respondent had actual or constructive notice of Complainant’s trademark registration that preceded the domain name registration by 30 years.
Respondent’s registered domain name, <spexfix.com>, is confusingly similar to Complainant’s famous mark SPEX. As such, Respondent has no legitimate commercial interest in the domain name. As Respondent had at least constructive notice of Complainant’s prior rights in or to SPEX for a period of some 30 years, Responded proceeded in bad faith when it registered <spexfix.com> domain name.
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.
Complainant has registered the SPEX mark with the USPTO (e.g., Reg. No. 1,312,902, registered Jan. 8, 1985) and CIPO (e.g., Reg. No. TMA872958, registered Mar. 14, 2010). Complainant uses the mark in connection with inorganic chemicals, chemical standards for general industrial and laboratory use, and for measuring and scientific instruments. The Panel finds that registration with the USPTO and CIPO is satisfactory evidence of having rights in or to this trademark. See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO).
Complainant argues that the <spexfix.com> domain name is identical or confusingly similar to its SPEX mark. First, the dominant element of the domain name is identical to Complainant’s mark, and thus will lead Internet users to believe that Complainant somehow sponsors or is affiliated with the subject domain name. Second, the domain name is confusingly similar in the sense that it adds the generic term “fix” along with the gTLD “.com.” These claims are unrebutted and, as such, this Panel accepts them as true.
Panels in the past have found that a respondent’s use of the complainant’s entire mark in the domain name establishes confusing similarity. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy . . . ”). The use of generic terms in a domain name that completely encompasses a complainant’s mark has also helped Panels establish confusing similarity. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). The Panel also notes that the addition of gTLDs does nothing to distinguish the domain name from the mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Thus, the Panel finds the Respondent’s registered domain name is confusingly similar to Complainant’s registered trademark and in violation of Policy ¶ 4(a)(i). Although Respondent filed a non-responsive Response, it failed to rebut this critical fact.
Respondent claims he has rights or legitimate interests in the disputed domain name. In the non-responsive Response filed with the Forum, Respondent argues that he has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Respondent claims to be using the domain name in connection with the development of a web-based application to be used in the architectural industry. See Resp., at Attached Exs. 1–2. Panels have found respondent’s to have rights and legitimate interests in a domain name when the respondent has actually made demonstrable preparations to use the domain name in regards to a bona fide offering. See SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the disputed domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Here, other than two apparent screen shots and Respondent’s mere contention that it has made such bona fide preparations, the record is devoid of any supporting evidence for the claim that it is making preparations to use the domain name commercially in the architecture business. As Respondent has failed to file a responses in accordance with the Rules, the Panel accepts as true those allegations in the Complaint that are not clearly unreasonable. In light of the fact that the Complainant’s mark has been registered and subsisting for 30 years prior to the domain name being registered by the Respondent and in that time has become famous (and this fact, too, is unrebutted), it would be unreasonable to accept the fanciful notion that Respondent possessed rights or legitimate commercial interests in or to the subject domain name simply from a one page e-mail communication that did not comport with the Rules for a Response.
The Complainant alleges that Respondent’s use of the domain name does not consist of a bona fide offering of goods or services because before Complainant filed this complaint the domain name resolved to a parked webpage wherein the domain name appeared to be offered for sale. See Compl., at Attached Ex. 10. Although Respondent is ultimately responsible for the content on a parked webpage, it is not clear that it is reasonable in these circumstances to impute the Respondent with complete knowledge of what was for sale and further to rely on that single and imputed fact as the primary basis for showing that the Respondent lacked a legitimate commercial interest in or to the domain name. Given Respondent’s representations, the opposite conclusion is just as reasonable.
For this argument, Complainant relies on one piece of evidence. Compl., at Attached Ex. 10. This piece of “evidence” consists of a single screen shot from a GoDaddy web page that appears to list the domain name for sale. As it is not clear from this screen shot if this precise domain name is for sale or if domain names like this domain name are being offered for sale by GoDaddy and not the Respondent, it would be unreasonable for this Panel, given nothing more, to rely exclusively on this to establish that the Respondent lacked any legitimate commercial interests in the domain name. Again, given Respondent’s claims to have such a commercial interest, those claims seem as reliable as the GoDaddy screen shot which purports to show the opposite.
However, given the totality of the circumstances where the Complainant’s mark has been registered for over 30 years and it remains unrebutted that it has become famous, this Panel concludes that the Respondent proceeded to register the subject domain name with no legitimate commercial purpose.
Complainant argues that Respondent is using the domain name in bad faith by intending to profit commercially from a likelihood of confusion. Complainant argues that Respondent presumably receives click-through fees, and that such fees are received because Internet users will visit the resolving webpage and think it is somehow affiliated with Complainant. The Panel notes that Respondent is not making commercial use of the domain name and that, therefore, no such profit is possible. Thus, if bad faith under Policy ¶ 4(b)(iv) exists, it must be shown to exist otherwise than non-existing, hypothetical click through fees.
Complainant argues that bad faith can be inferred from the fact that Respondent is operating a placeholder webpage, which fails to consist of active use. The Panel notes that the domain name resolves to a placeholder website and that no active use is being made. See Compl., at Attached Ex. 11. Prior Panels have found that a failure to make active use of a domain name can amount to an inference of bad faith under the Policy through the totality of the circumstances. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”). Here, the totality of the circumstances indicate that there was bad faith in violation of Policy 4(a)(iii).
Complainant argues that Respondent had actual or constructive knowledge of Complainant's rights in the SPEX mark as its registrations date to at least 1984. Complaint at 5. Complainant argues that because the domain name uses the entire mark and because Complainant’s registration dates with the USPTO predate Respondent’s domain name registration by some 30 years, Respondent’s actual or constructive knowledge of Complainant's mark was certain.
Given that there are unrefuted claims in the record by the Complainant that the mark SPEX is famous, it is inconceivable that Respondent, under his own admission knowledgeable of the industrial arts, could innocently affix a suffix of “fix” to an otherwise famous mark in good faith. The Panel finds that Respondent had actual or constructive knowledge of Complainant's mark and rights and therefore determines that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name")."
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <spexfix.com> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: February 13, 2015
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