The Trimount Company, Inc DBA StinkySocks Hockey v. Eric Sweet / Scribblers' Club
Claim Number: FA1511001647849
Complainant is The Trimount Company, Inc DBA StinkySocks Hockey (“Complainant”), Massachusetts, USA. Respondent is Eric Sweet / Scribblers' Club (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stinkysocks.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 19, 2015; the Forum received payment on November 19, 2015.
On November 20, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <stinkysocks.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 November 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@stinkysocks.com. Also on November 23, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant claims that it has rights in the STINKYSOCKS HOCKEY mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,815,524, registered September 22, 2015). Respondent’s domain <stinkysocks.com> is confusingly similar to the STINKYSOCKS HOCKEY mark because the domain merely removes the word “hockey” from the mark.
ii) Respondent should be considered as having no rights or legitimate interests in the disputed domain name. Respondent has no trademark registrations related to the domain nor has Respondent been commonly known by the domain name. Further, Respondent’s attempt to sell the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
iii) Respondent has registered and is using the disputed domain in bad faith. Respondent registered the domain primarily for the purpose of selling the domain for an amount in excess of out of pocket costs.
B. Respondent
Respondent has not submitted a Response in this proceeding. The Panel notes that Respondent has included, in its correspondence to the FORUM, webpage printouts of Complainant’s current <stinkysocks.net> domain showing that Complainant started doing business in 2006, whereas WHOIS information shows that Respondent’s disputed <stinkysocks.com> domain was created in 2000.
The Panel notes that the disputed domain was registered on February 2, 2000.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent did not register the disputed domain name 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 response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims to have rights in the STINKYSOCKS HOCKEY mark based on registration of the mark with the USPTO (Reg. No. 4,815,524, registered September 22, 2015). Additionally, Complainant claims that its first use of the mark occurred in 2006. Panels have routinely found a complainant to have rights in a mark based on registration of the mark with the USPTO. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that Complainant has rights in the STINKYSOCKS HOCKEY mark pursuant to Policy ¶ 4(a)(i).
Complainant also claims that Respondent’s <stinkysocks.com> domain is confusingly similar to the STINKSOCKS HOCKEY mark in which Complainant claims to have rights. Respondent’s domain differs from the STINKYSOCKS HOCKEY mark through the removal of the word “hockey” and through the addition of the generic top-level domain (“gTLD”) “.com.” Panels have consistently found that the gTLD “.com” is irrelevant when determining whether a domain and a mark are similar under Policy ¶ 4(a)(i). See 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). Panels have also found that deleting a single word from a mark does not diminish confusing similarity. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). Accordingly, the Panel finds that Respondent’s disputed <stinkysocks.com> domain is confusingly similar to the STINKYSOCKS HOCKEY mark in which Complainant claims to have rights.
Complainant claims that Respondent has registered and is using the disputed domain in bad faith. In connection with this claim, Complainant argues that Respondent registered the domain primarily for the purpose of selling the domain for an amount in excess of out of pocket costs. Respondent’s domain appears to resolve a website that offers the domain for sale at a price of $6500.00.
The Panel recalls that the registration date for the <stinkysocks.com> domain name is February 2, 2000, which predates the date on which Complainant acquired registered rights in the mark (Reg. No. 4,815,524, registered September 22, 2015). Further, Complainant claims that its first use of the mark STINKYSOCKS HOCKEY occurred in 2006. As such, it does not appear that Complainant’s trademark was ever in use when the disputed domain name was registered.
The Panel observes a general view of the UDRP panels that although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. See John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, D2001-0074 (WIPO, May 1, 2001) and Digital Vision, Ltd. v. Advanced Chemill Systems, D2001-0827 (WIPO Sep. 23, 2001).
Therefore, the Panel determines that Complainant failed to establish Respondent’s registration of the disputed domain name in bad faith and concludes that Respondent did not register the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii), the Panel declines to analyze the other element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
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 <stinkysocks.com> domain name REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: December 30, 2015
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