SummerTech Inc. v. Jimmy Hill / iD Tech Camps
Claim Number: FA1512001652542
Complainant is SummerTech Inc. (“Complainant”), represented by Suanne M. Ansari of Suanne M. Ansari, LLC, South Carolina, USA. Respondent is Jimmy Hill / iD Tech Camps (“Respondent”), represented by Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <summertechcamp.com> and <summertechcamp.net>, 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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2015; the Forum received payment on December 15, 2015.
On December 15, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <summertechcamp.com> and <summertechcamp.net> 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 December 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2016 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@summertechcamp.com, postmaster@summertechcamp.net. Also on December 18, 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 January 11, 2016.
A timely Additional Submission from Complainant was received and determined to be complete on January 16, 2016.
A timely Additional Submission from Respondent was received and determined to be complete on January 21, 2016.
On January 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
- Complainant has used the SUMMERTECH service mark in connection with its operations since 2001. It obtained a registration for that mark with the United States Patent and Trademark Office ("USPTO"), and has also registered and used the domain name <summertech.net>.
- The disputed domain names, <summertechcamp.com> and <summertechcamp.net>, are confusingly similar to the SUMMERTECH mark. Both names incorporate the mark fully and add merely the generic term "camp", which creates no meaningful distinction.
- Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not a licensee of Complainant. Moreover, Respondent uses the disputed domain names to redirect internet traffic to Respondent's website, found at <idtech.com>, where services competitive with Complainant's are offered. Such use is neither a bona fide offering of goods or services nor noncommercial or fair use of the names. Also, there is no evidence that Respondent has ever been commonly known as either of the disputed domain names.
- Respondent has registered and is using the disputed domain names in bad faith. After communication with Complainant, Respondent briefly deactivated the names in 2014, but has since resumed the prior redirection to its primary domain name and website. Such redirection is done for Respondent's commercial gain and intentionally relies upon internet user confusion between Complainant's mark and the disputed domain names. Moreover, said use of the names is designed by Respondent to disrupt Complainant's legitimate business.
B. Respondent
- Complainant's SUMMERTECH mark is composed of two common descriptive words, "summer" and "tech". The disputed domain names, <summertechcamp.com> and <summertechcamp.net>, also involve a descriptive term, "summer tech camp", which applies to the offerings of many schools, camps and others offering technology training at camps during the summer.
- Complainant's offerings are limited to only one geographical location in the United States, and have dwindled since shortly after Complainant's inception. Thus, at best, Complainant's mark is very weak.
- Respondent has been in business since 1999, having operated summer tech camps in multiple states within the United States before Complainant's first offerings.
- Complainant provides no evidence to support its claim that its SUMMERTECH mark has achieved a secondary meaning that relates back only to the Complainant's services. The limited following found on Complainant's social media sites attests to the weakness of Complainant's notoriety and thus its mark.
- On the other hand, Respondent's operations have a far greater reach in the United States, and have garnered far greater publicity and media notoriety. Respondent also obtained a USPTO registration for the mark ID TECH CAMPS.
- Unaware of Complainant, Respondent registered the disputed domain names in 2009 to further its own endeavors in summer technology camp services. In 2014, the parties entered into discussions about the names, but Respondent reactivated their use after it determined that Complainant was not serious about Respondent's proposals for resolving the matter in an amicable manner.
- The disputed domain names are not confusingly similar to the Complainant's mark, since that mark is weak based on its composition of generic terms and the common use by third parties of the "summer tech camps" concept.
- Respondent has legitimate interests in the disputed domain names because Respondent offers services -- begun prior to Complainant's use of its service mark -- that relate directly to the plain or fair meaning of the descriptive words that make up the names. As Respondent registered the names first, it has a legitimate interest in the generic value of those names.
- The disputed domain names were not registered or used in bad faith. They were registered and used for their descriptive value, not for intentional confusion with Complainant's mark. Moreover, even constructive knowledge of that mark would not preclude Respondent's good faith registration and use of the disputed domain names for their descriptive value.
- Complainant should be found guilty of reverse domain name hijacking because it should have known that Respondent had a legitimate interest in domain names composed of generic descriptive terms. Moreover, Complainant misrepresented its marketplace presence and the conduct of the negotiations between the parties.
C. Complainant's Additional Submission
- "Summertech" is not a generic word, but a suggestive combination of the terms "summer" and "tech" -- the latter an abbreviation for "technology" -- which gives rise to Complainant's suggestive service mark, SUMMERTECH.
- Respondent's claim to use the disputed domain names for their descriptive value is belied by Respondent's failure to register and use other readily available domain names (e.g., <onlinetechcamp.com> or <overnitetech.com>) for similar purposes.
- If Respondent began operations in 1999, why did it wait until 2009 to register the disputed domain names? That delay in registration, coming after Complainant obtained its USPTO registration for its confusingly similar mark, suggests the illegitimacy of Respondent's actions.
- Complainant is not involved in reverse domain name hijacking, but seeks only to halt Respondent's redirection of Internet users to its website by use of domain names that mimic Complainant's valid trademark. Respondent does not need the names to advertise its business, and Complainant had no intent to misrepresent the prior discussions between the parties.
D. Respondent's Additional Submission
- Complainant's service mark is neither fanciful nor suggestive, and, even if it were, that would not negate Respondent's legitimate use of the disputed domain names, which are composed of generic/descriptive terms.
- It is wholly irrelevant that Respondent fails to use some domain names, as suggested by Complainant, that are composed of terms that may be descriptive of the services offered by Respondent. Moreover, Respondent does own other domain names, not suggested by Complainant, that do so describe Respondent's operations.
- The timing of Respondent's registration of the disputed domain names in 2009 had to do with the term, "summer tech camp", becoming common, and is not evidence of a bad faith effort to redirect business away from Complainant.
- Complainant fails to address in a pertinent manner the issue of reverse domain name hijacking, as it misconstrues whether there was ever an agreement between the parties regarding disposal of the disputed domain names and it does not explain why it ignored extensive third party use of the term "summer tech camp".
Complainant is a United States company that provides technology training during the summer and operates under the service mark SUMMERTECH, which is registered with the USPTO (Registration No. 2,935,963; registered on Mar. 29, 2005).
Respondent is the owner of the disputed domain names, <summertechcamp.com> and <summertechcamp.net>, which were registered on March 18, 2009. Respondent uses the names to redirect internet users to its website, found at the domain name <idtech.com>, which offers summer technology training services similar to those offered by Complainant.
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 submitted to the Panel pertinent evidence (Exhibit A) of a valid registration with USPTO for the service mark SUMMERTECH, and thus the Panel concludes that Complainant has sufficient rights in that mark to comply with the requirements of Policy ¶ 4(a)(i). See Schneider Group, Inc. v. Mann, D2010-0448 (WIPO May 5, 2010) ("The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO..."); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) ("Complainant has established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office...").
The disputed domain names, <summertechcamp.com> and <summertechcamp.net>, both contain in full the SUMMERTECH mark. They also add the descriptive word, "camp", along with obligatory generic top-level domains. Countless prior UDRP panels have opined that the mere addition of a descriptive term and a gTLD to a full trademark or service mark in a domain name does not mitigate the confusing similarity between the name and mark. In the Panel's view, that rationale controls in this case, especially as "camp" relates easily to "summertech" (as even Respondent admits) and only increases the confusion internet users might encounter in distinguishing the disputed domain names from Complainant's mark. See Starstruck Enter'm't, Inc. v. Screwface Rec., FA 1447898 (Nat. Arb. Forum July 23, 2012) (finding <starstruckmanagement.com> and <starstruckmanagement.net> to be confusingly similar to the STARSTRUCK mark); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that <bodyshopdigital.com> is confusingly similar to the THE BODY SHOP trademark).
As for Tire Discounters, Inc. v. TireDiscounter.com, FA 679485 (Nat. Arb. Forum June 14, 2006), where the panel found that <tirediscounter.com> was not confusingly similar to the TIREDISCOUNTERS mark, the Panel believes that the reasoning does not apply here. In that case the words "tire" and "discounters" are full common terms. In this case one of the terms, "tech", is an abbreviation. Respondent contends that it is necessarily an abbreviation for the word, "technology". However, the Panel believes that "tech" can also be an abbreviation for "technical" or "technician". As a result the combined term "summertech" cannot be viewed as a common term in the same way "tirediscounters" might, because there are many possible interpretations of "summertech". In effect, the Panel views the SUMMERTECH mark as being more distinctive than the TIREDISCOUNTERS mark. Therefore, the Panel must again dismiss the holding inTireDiscounter.com, supra, as controlling in this case.
Accordingly, the Panel rules that Complainant has prevailed with respect to the first element of the Policy.
A consensus of prior UDRP panels have held that, in order for the burden to shift to a respondent with respect to the second element under the Policy, a complainant must make a prima facie case that that respondent has no rights or legitimate interest in a disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); 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.”). In this case, Complainant has established that the disputed domain names are confusingly similar to Complainant's mark and that there is no affiliation or license between Complainant and Respondent. Those circumstances enable the Panel to conclude that Complainant has put forth a such a prima facie case.
Respondent's primary line of counter to Complainant's prima facie case involves the generic and descriptive nature of Complainant's mark. Respondent contends that it registered and is using the disputed domain names, <summertechcamp.com> and <summertechcamp.net>, for their plain meanings, i.e., to furnish technology training to students at summer camps. Not unsurprisingly, these are exactly the same services that Complainant provides. However, Respondent argues and presents convincing arguments that Complainant's business is relatively localized and far away from Respondent's base, and is certainly not so well established that the phrase, "summer tech", let alone, "summer tech camp", would be associated solely, or even primarily, with Complainant's services or mark. The Panel notes that, within the Complaint and its Additional Submission, Complainant had plenty of opportunity to furnish evidence of the size and/or scope of its business and its share of the relevant market. It failed markedly to do so.
Thus, the Panel is left to conclude that Complainant's operations are not of a size that they command such significant deference for its mark. Under the Policy, size does matter. The Panel is hard pressed to conclude that Respondent is using the disputed domain name to usurp or intrude upon Complainant's relatively modest clientele. Instead, the Panel believes that Respondent is indeed using the name, descriptive of its services, to fairly expand its legitimate business. There are many prior UDRP cases where panels have found that respondents have a legitimate interest in using domain names which might include a relatively generic trademark or service mark, if they are using those names for activity that corresponds to the plain meaning of those generic or common descriptive names and not to trade upon the mark holder's goodwill or notoriety. See Molly McGowan v. RegTek, FA 1621400 (Nat. Arb. Forum July 21, 2015) ("...a respondent may have a right or legitimate interest to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent's aim in registering the disputed domain name was to profit from and exploit the complainant's trademark."); see also Public Storage v. Deer Valley, D2011-1397 (WIPO Oct. 17, 2011) ("...the combination of the obvious descriptive quality of Complainant’s mark, Respondent’s actual use of the disputed domain names, and the lack of any evidence that Respondent’s aim in registering the disputed domain names at issue was to profit from or exploit Complainant’s mark, supports a finding of fair use and therefore legitimate rights."). As a result, the Panel determines that Respondent has successfully rebutted Complainant's prima facie case.
The Policy is designed not to resolve close cases of trademark infringement and/or unfair competition, but to ferret out relatively clear cases of abusive cyber-squatting. In line with the analysis above, the Panel does not find sufficient evidence to place this case within the latter category. See Match.com, LP v. Zag, D2004-0230 (WIPO June 2, 2004) ("It is important that Panelists decide cases based on the very limited scope of the Policy. The Policy is designed to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another.").
Accordingly, the Panel rules that Complainant has failed to prevail with respect to the second element of the Policy.
As Complainant has failed to sustain its case as to the second element required under the Policy, the Panel declines to address the third element of the Policy.
Reverse Domain Name Hijacking
Respondent has requested of the Panel that it issue a finding of reverse domain name hijacking against Complainant.
In this regard, the Panel first notes that it found that Complainant did possess valid rights in a service mark to which the disputed domain names are confusingly similar.
Respondent argues that Complainant should have known that the generic nature of its mark and the disputed domain names would mean that Respondent would obviously have a legitimate interest in those names. Certainly, the Panel ultimately agreed with that position. However, the Panel does not believe that the Policy requires that a complainant must emphasize every weakness in its case. Here, the Panel finds no deception as to this issue, only an attempt by Complainant and its counsel to zealously guard Complainants’ rights. It was up to Respondent to expose such weaknesses, which it did to the Panel's satisfaction. That is why the Policy provides for, and encourages, the filing of responses. In this case, the Panel finds that the Policy was used as designed and that there is no real evidence of reverse domain name hijacking on the part of Complainant.
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 <summertechcamp.com> and <summertechcamp.net> domain names or REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: February 4, 2016
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