Blue Ridge Fiberboard, Inc. v. DOMAIN ADMINISTRATOR / DOMAIN ASSET HOLDINGS, LLC
Claim Number: FA1602001661150
Complainant is Blue Ridge Fiberboard, Inc. (“Complainant”), represented by Priscilla F. Gallagher of McAndrews, Held & Malloy, Ltd., Illinois, USA. Respondent is DOMAIN ADMINISTRATOR / DOMAIN ASSET HOLDINGS, LLC (“Respondent”), represented by James L. Bikoff of Smith, Gambrell & Russell, LLP, District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <soundstop.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.
Jaime Delgado, Sandra J. Franklin and Hon. Carolyn Marks Johnson as Panelists.
Complainant submitted a Complaint to the Forum electronically on February 16, 2016; the Forum received payment on February 16, 2016.
On February 17, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <soundstop.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 February 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 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@soundstop.com. Also on February 19, 2016, 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 March 10, 2016.
Complainant submitted a timely Additional Submission, which was received on March 15, 2016.
Respondent submitted a timely Additional Submission, which was received on March 21, 2016
On March 16, 2016, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the Forum appointed Jaime Delgado, Sandra J. Franklin and Hon. Carolyn Marks Johnson as Panelists.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the SOUNDSTOP mark in connection with its business in fiberboard sheathing. Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,846,886, first use in commerce 1971, filed Mar. 24, 2003, reg. May 25, 2004), which demonstrates rights in the mark. Complainant also contends that it has common law rights in the SOUNDSTOP trademark that date back to at least 1971. Respondent’s <soundstop.com> domain name is identical to Complainant’s SOUNDSTOP mark as it incorporates the mark in its entirety and adds only the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <soundstop.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <soundstop.com> domain name. Rather, the domain name resolves to a website containing an offer to sell the domain name at a price far exceeding out-of-pocket costs. See Compl., at Attached Annex 8.
Respondent registered and is using the <soundstop.com> domain name in bad faith. Respondent registered the <soundstop.com> domain name for the primary purpose of selling the domain name to Complainant or one of Complainant’s competitors. Respondent has a pattern of domain name misuse as evidenced by two prior UDRP cases. Further, Respondent had actual or constructive notice of the NEXUS mark and Complainant’s rights therein.
B. Respondent
Respondent contends that the disputed domain name is comprised of common and descriptive terms and thus cannot be deemed identical to Complainant’s mark.
Respondent further argues that its business registering generic domain names for resale grants it rights and legitimate interests in the domain name and is not evidence of bad faith.
C. Additional Submissions
In its additional submission, Complainant asserts its widespread use of the SOUNDSTOP mark in commerce. Furthermore, Complainant asserts that the terms of the disputed domain name are not generic, and that the Panel should ignore Respondent’s argument in this regard.
Respondent does not dispute Complainant´s ownership of a trademark registration but further argues that third-party use is relevant to Respondent´s rights and legitimate interests in the Soundstop.com domain name and that a Federal Trademark registration is not evidence of bad faith.
Complainant uses the SOUNDSTOP mark in connection with its business in fiberboard sheathing. Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,846,886, first use in commerce 1971, filed Mar. 24, 2003, reg. May 25, 2004).
Respondent is the owner of the domain name <soundstop.com>, registered with eNom, Inc.
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 uses the SOUNDSTOP mark in connection with its business in fiberboard sheathing. Complainant has registered the mark with the USPTO (e.g., Reg. No. 2,846,886, first use in commerce 1971, filed Mar. 24, 2003, reg. May 25, 2004), which demonstrates rights in the mark. Past Panels have found registration with the USPTO to be sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Therefore, the Panel finds that Complainant has demonstrated rights under Policy 4(a)(i).
Complainant also contends that it has common law rights in the SOUNDSTOP trademark that date back to at least 1971. In order to obtain common law rights in a trademark under the Policy, a party must show that the mark has acquired secondary meaning. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (finding that, in order to have common law rights, the complainant was required to establish that its mark had acquired secondary meaning). Relevant evidence of secondary meaning includes, but is not limited to, “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). The USPTO lists 1971 as the date of first use in commerce for Complainant’s mark. Complainant has also provided photographs of the way in which it uses the SOUNDSTOP mark for marketing purposes. See Compl., at Attached Amended Ex. 13. This is sufficient to establish secondary meaning, granting Complainant common law rights in the SOUNDSTOP mark dating back to 1971.
Respondent’s <soundstop.com> domain name is identical to Complainant’s SOUNDSTOP mark as it incorporates the mark in its entirety and adds only the gTLD “.com.” Panels have found the addition of a gTLD to be insufficient to overcome a finding of identically between a trademark and the disputed domain name. See 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.”). Therefore, Respondent’s <soundstop.com> domain name is identical to Complainant’s SOUNDSTOP mark under Policy ¶ 4(a)(i).
While Respondent contends that the <soundstop.com> domain name is comprised of common and descriptive terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. Furthermore, this is not the proper forum to determine whether or not a certain trademark is generic or descriptive. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Rights and Legitimate Interests: Policy ¶ 4(a) (ii).
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the <soundstop.com> domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information regarding the disputed domain name lists “Domain Administrator” as registrant. Complainant also asserts that it has not given Respondent permission to use its SOUNDSTOP mark. Therefore, in light of the available evidence, there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial nor fair use through the <soundstop.com> domain name. Rather, the domain name resolves to a website containing an offer to sell the domain name <soundstop.com> for $35,000. Past Panels have found an offer to sell a disputed domain name to the public, when it contains a registered trademark, not to be a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights). While Respondent may have a legitimate business in reselling domain names, Respondent does not have the right to sell a domain name containing another’s registered trademark. Therefore, the Panel finds that Respondent’s use of the <soundstop.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s registration and use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(i). First, Complainant contends that Respondent registered the <soundstop.com> domain name for the primary purpose of selling the domain name to Complainant or one of Complainant’s competitors. Past Panels have found an offer to sell a disputed domain name to evince bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, the offer to sell a domain name for an amount in excess of out-of-pocket costs constitutes a bad faith offer to sell under Policy ¶ 4(b)(i).
Respondent has a pattern of domain name misuse as evidenced by two prior WIPO cases. See e.g., Lifetime Assistance, Inc. v. Domain Asset Holdings, LLC, WIPO Case No. D2011-0875; Universal Assistance, S.A. v. Domain Asset Holdings, LLC, WIPO Case No. D2012-2547. The Panel holds that Respondent’s prior adverse WIPO decisions show a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Respondent must have had constructive notice of Complainant's rights in the SOUNDSTOP mark prior to registration of the <soundstop.com> domain name because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel finds that it is highly unlikely that Respondent was not aware of Complainant's mark when it registered the disputed domain name due to the nature of Respondent’s business. Respondent states that it is in the business of selling domain names and thus necessarily apprises itself of whether or not a domain name contains a registered trademark; this is particularly true when the newly-available domain name was previously held by the trademark owner. Thus, the Panel finds that Respondent registered in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <soundstop.com> domain name be TRANFERRED from Respondent to Complainant.
Jaime Delgado (Chair)
Sandra J. Franklin
Hon. Carolyn Marks Johnson
Dated: March 29, 2016
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