Stanley Yim / Stanley Yim and Associates, Inc. v. Mike Dunaway
Claim Number: FA1604001670541
Complainant is Stanley Yim / Stanley Yim and Associates, Inc. (“Complainant”), represented by Abigail Z. Jin, Washington, USA. Respondent is Mike Dunaway (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sya.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2016; the Forum received payment on April 14, 2016.
On April 15, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sya.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 April 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@sya.com. Also on April 20, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant, Stanley Yim / Stanley Yim and Associates, Inc., has owned and operated the civil engineering firm SYA, Inc., in the state of Hawaii for nearly 40 years. Complainant registered the <sya.com> domain name on October 2, 1996 to use in connection with its business. The disputed domain name is identical to the SYA mark in which complainant has established common law rights, save for the affixation of the generic top-level domain (“gTLD”) “.com.”
Respondent, Mike Dunaway, gained control of the <sya.com> domain name through hacking. Respondent is not commonly known by or authorized to use the SYA mark. Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent misappropriated the <sya.com> domain name.
Respondent’s has acted in bad faith. Respondent gained control of the <sya.com> domain name through hacking of the domain name registrar and theft.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Stanley Yim / Stanley Yim and Associates, Inc., has owned and operated the civil engineering firm SYA, Inc., in the state of Hawaii for nearly 40 years. Complainant registered the <sya.com> domain name on October 2, 1996 to use in connection with its business. Complainant has common law rights in the SYA mark. The disputed domain name is identical to the SYA mark.
Complainant initially registered the <sya.com> domain name on October 2, 1996. However, Respondent gained control of the domain name on May 30, 2015.
Respondent, Mike Dunaway, gained control of the <sya.com> domain name through hacking. Respondent is not commonly known by or authorized to use the SYA mark. Respondent does not have any rights or legitimate interests in the disputed domain name.
Respondent registered and uses the <sya.com> 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(f), 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 (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.”).
Although Complainant does not have a registered trademark for the SYA mark, Complaint has common law rights in the mark. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (A Complainant does not have to hold registered trademark rights to have rights in a mark under Policy ¶ 4(a)(i); a Complainant may rely on common law or unregistered trademarks.).
Complainant has shown that it has owned and operated the civil engineering firm SYA, Inc., in the state of Hawaii for nearly 40 years. Complainant registered the <sya.com> domain name on October 2, 1996 to use in connection with its business. Complainant has submitted receipts from 2014 and 2015 detailing payment for the registration of the <sya.com> domain name. Complainant has established secondary meaning in the SYA mark through continuous and ongoing use for nearly forty years.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <sya.com> domain name. Complainant has not authorized or licensed Respondent to use Complainant’s mark. The WHOIS information lists “Mike Dunaway” as registrant. See T State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent wrongfully acquired the <sya.com> domain name. See Ezquest, Inc. v. Baorui, FA 1445631 (Nat. Arb. Forum July 3, 2012) (finding that Respondent’s hijacking of Complainant’s domain name and fraudulent transfer to itself does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under the Policy).
Respondent’s wrongful acquisition of a domain name that was previously registered to Complainant constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Ezquest, Inc. v. Baorui, FA 1445631 (Nat. Arb. Forum July 3, 2012) (finding that hacking a complainant’s registration account is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sya.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 26, 2016
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