SPS Commerce, Inc. v.
Registration Private / Domains By Proxy, LLC
and Singapore Post Limited
Claim Number: FA1703001724583
Complainant is SPS Commerce, Inc. (“Complainant”), represented by Peter J. Ims of Westman, Champlin & Koehler, P.A., Minnesota, United States. Respondents are Registration Private / Domains By Proxy, LLC and Singapore Post Limited (together, “Respondent”), represented by Grace E. King of Squire Patton Boggs LLP, California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spcommerce.com>, registered with GoDaddy.com, LLC.
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.
David H. Bernstein (Chair), Terry F. Peppard, and David E. Sorkin as Panelists.
Complainant submitted a Complaint to the Forum electronically on March 30, 2017, naming Registration Private / Domains By Proxy, LLC as Respondent. The Forum received payment on March 30, 2017.
On March 30, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <spcommerce.com> domain name is registered with GoDaddy.com, LLC. In this verification, GoDaddy.com, LLC identified the Registrant of the domain name as Singapore Post Limited. GoDaddy.com, LLC 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”).
An April 3, 2017 the Forum sent a deficiency letter to Complainant, requesting Complainant to amend the header and paragraph 8 of the Complaint to identify Respondent according to the current WHOIS registration information for the disputed domain name. It appears that the Forum intended to provide the proper identification of Respondent in its letter but inadvertently used the information Complainant had used in its Complaint.
As requested by the Forum, Complainant filed an amended complaint, but consistent with the Forum ‘s deficiency letter, did not amend the header or paragraph 8 of the Complaint to name Singapore Post Limited as the Respondent.
On April 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2017 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@spcommerce.com. Also on April 5, 2017, 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, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts. On April 20, 2017, pursuant to Forum Supp. Rule 6(a), the Forum extended the deadline for a Response to May 1, 2017. In none of these communications did the Forum indicate that the deadline for filing a Response was to be measured by any particular time zone. Rather, the notice simply said that the Response must be filed with the Forum by the deadline.
Respondent, which is located in the Pacific Standard Time time zone, filed its Response at around 11 pm Pacific Standard Time on May 1, 2017, which was 1 am on May 2, 2017 in Central Standard Time (where the Forum is located). Because the Response was filed one hour late (measured by Central Standard Time), the Forum indicated that the Response was filed after the May 1, 2017 deadline.
On May 4, 2017, Respondent filed an additional submission regarding the timeliness of its Response. On May 5, 2017, Complainant submitted an additional submission, “conditionally [responding] to Respondent’s untimely Response.”
On May 12, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, and taking into account the parties’ respective panelist nominations and Chair preferences, the Forum appointed David H. Bernstein, Terry F. Peppard, and David E. Sorkin as Panelists, with Mr. Bernstein serving as Chair.
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 asserts that it owns two trademark registrations for SPS COMMERCE and that the Domain Name is confusingly similar to its registered SPS COMMERCE marks. The United States Patent and Trademark Office (“USPTO”) registered the first mark on October 10, 2000 as U.S. Trademark Registration Number 2,393,280. The USPTO registered the second mark on October 6, 2015 as U.S. Trademark Registration Number 4,827,517.
Complainant alleges that the Domain Name is confusingly similar to its mark because it “incorporates [the mark] substantially in its entirety” and differs only by its omission of the second “s” in SPS COMMERCE. This similarity, Complainant contends, creates a likelihood of confusion as to the origin, sponsorship, or affiliation of Respondent’s website.
Complainant next alleges that Respondent has no rights or legitimate interests in the Domain Name. In support of this allegation, Complainant asserts that Respondent is not authorized to use the SPS COMMERCE mark “or any mark confusingly similar thereto.” Complainant alleges that Respondent’s offering of competitive services is not, within the meaning of the Policy, a bona fide offering of services. Complainant further alleges that Respondent has not been commonly known by the Domain Name. In support of that allegation, Complainant states that it searched for trademark applications or registrations for “SPCOMMERCE” or “SP COMMERCE” in various jurisdictions and found none.
In further support of its allegation that Respondent lacks rights or legitimate interests in the Domain Name, Complainant argues that Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Respondent is instead using it to “tortiously interfere with Complainant’s business and to intentionally confuse potential customers for Respondent’s own gain.” Complainant argues that Respondent is in direct competition with Complainant and that it has “improperly chosen to enter the retail supply chain field.”
Lastly, Complainant alleges that Respondent registered and is using the Domain Name in bad faith. According to Complainant, Respondent must have known that Complainant existed because Respondent is a competitor. Complainant, citing United States law, 15 U.S.C. § 1057(c), also argues that Respondent at least had constructive notice of Complainant’s prior use of the SPS COMMERCE mark in the United States. Given this constructive knowledge, Complainant suggests, Respondent’s registration of the Domain Name for use in a competing business was done in bad faith. Complainant alleges that Respondent continues to use the Domain Name in bad faith because it uses the Domain Name intentionally to imply that its services are affiliated with Complainant, thereby diverting purchasers from Complainant’s website for Respondent’s commercial gain.
B. Respondent
Respondent does not dispute that Complainant has rights in the SPS COMMERCE mark. It argues, however, that its Domain Name is not confusingly similar to the mark, pointing to analytics from Amazon.com’s Alexa allegedly showing that Internet users are not actually confusing the Domain Name and Complainant’s website. Respondent further argues that the letters “sp” “exist in a crowded field of acronyms,” thereby rendering the omitted “s” a noticeable difference. Respondent asserts that this difference is heightened because the term “commerce” is descriptive and was disclaimed by Complainant in its trademark registration process.
As to the second element, Respondent alleges that it has rights and legitimate interests in the Domain Name because Respondent undertook preparations to use the Domain Name in 2014—and actually did use the Domain Name beginning in January 2016—in connection with a bona fide offering of e-commerce services, before learning of this dispute. Respondent alleges that, having used the brand name “SP e-Commerce” and the domain name specommerce.com for a time, it engaged two branding agencies to develop a second brand name, to encompass both its e-commerce business and all other “non-postal mail businesses.” This process, which ran from 2014 through mid-2015, resulted in the selection of the brand name “SP Commerce” and the Domain Name at issue. Respondent secured the Domain Name in July 2015, and the Domain Name went live in January 2016. Respondent alleges that the website features SP Commerce’s offerings in “e-commerce technology, fulfillment & logistics, digital marketing and creative services, and customer care” and that Respondent has spent approximately $275,000 in marketing those services.
Respondent asserts that two of Complainant’s arguments are inapposite to the question of whether Respondent has rights or legitimate interests in the Domain Name. First, Complainant’s argument that Respondent is not authorized to use the SPS COMMERCE mark addresses trademark infringement, not cybersquatting. Second, that Complainant and Respondent are competitors—even if true—is irrelevant because competing businesses can simultaneously make bona fide offers of goods or services.
Lastly, Respondent argues that Complainant has failed to show any evidence that Respondent registered or is using the Domain Name in bad faith. Respondent alleges that it did not know of Complainant or Complainant’s SPS COMMERCE mark before registering the Domain Name, that it has never intended to capitalize on the goodwill of the mark, and that it has never attempted to sell—and does not intend to sell—the Domain Name. Respondent reiterates that it chose the Domain Name through a “branding project” undertaken with the help of two Singapore-based branding agencies, and not from any bad faith targeted at Complainant, which it did not know to exist at the time.
Respondent argues that it is not currently using the Domain Name in bad faith because, before the filing of the Complaint, it had never been notified that it was misappropriating Complainant’s mark. Furthermore, that Complainant and Respondent are business competitors, without more, is not itself evidence of bad-faith use by Respondent of the Domain Name.
C. Additional Submissions
In its additional submission, Respondent asserts that it submitted its Response and accompanying annexes on May 1, 2017, between 10:56pm and 10:59pm Pacific Standard Time. As noted above, the Forum deemed the Response untimely because it considered Central Standard Time to be the governing time zone, making the Response approximately one hour late.
Respondent argues that the Response should be accepted as timely because the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) do not specify which time zone governs. In the alternative, should the Panelists decide that the response was untimely, Respondent requests that the Response nonetheless be accepted and considered because the delay was immaterial and did not prejudice Complainant.
In its additional submission, Complainant notes that Respondent, in quoting from Complainant’s prosecution of its ‘280 mark, omitted key language. The omitted portion included Complainant’s statement to the USPTO that “the addition of ‘COMMERCE’ to form the composite SPS COMMERCE[ gives] it a different appearance, sound, commercial impression and connotation.”
Complainant also addresses the Amazon.com Alexa evidence included in the Response. These rankings, Complainant argues, are based on “a sample of all internet users” and do not reflect a “complete break-down” of search traffic, as Respondent alleged. Complainant further notes that the Alexa data spans a “rolling 3 month period.”
The balance of Complainant’s supplemental submission either reprises arguments in the Complaint or addresses case law that was available to Complainant before it filed its Complaint.
Neither the UDRP Rules nor the Forum Supplemental Rules specifies any particular time zone that applies for purposes of submission deadlines. Nor did the Forum in its Notice of Complaint indicate that it interpreted deadlines in accordance with a particular time zone. The Panel thus finds that the Response, submitted on May 1, 2017 according to Respondent’s time zone, was timely.
Because Complainant’s additional submission addresses certain allegations contained in the Response that Complainant could not have anticipated, such as those relating to the Amazon.com Alexa data, the Panel accepts the Complainant’s additional submission. In the normal course, the Panel would have offered Respondent the option to submit an additional reply, without charge, but given that, as described below, the Panel has concluded that the Complaint must fail based on the allegations already before the Panel, the Panel has decided not to invite Respondent to submit a reply because any such reply would have served only to delay and increase the cost of this proceeding.
The Panel finds that Complainant has demonstrated rights in the SPS COMMERCE mark and that the Domain Name is confusingly similar to the SPS COMMERCE mark. Complainant has failed to show, though, that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has also failed to show that Respondent registered or is using the Domain Name in bad faith. For those reasons, the Complaint must be denied.
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.
Respondent does not dispute that Complainant owns federally-registered trademarks in SPS COMMERCE. Complainant’s rights in the mark are thus established.
With respect to confusing similarity, the threshold test is a comparison of the trademark and the domain name. Domain names in which the trademark is recognizable are generally regarded as confusingly similar to the trademark, even if common, descriptive, or negative terms are added. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), paragraph 1.7 (available at http://www.wipo.int/amc/en/domains/search/overview3.0/).
Here, the Domain Name is identical to the trademark except for the omission of a single letter. Respondent argues that “sp” are the “dominating letters” of the Domain Name and that, because they exist in a “crowded field of acronyms,” the omission of the second “s” is particularly noticeable.
Respondent’s argument is without merit. The Domain Name is virtually identical to Complainant’s trademark, with the omission of only a single letter. It is true that a substantial part of the Domain Name is the non-distinctive term “commerce,” but that is not the only similarity between the domain name and the trademark—there remains substantial similarity between the SP portion of the domain name and the SPS portion of the trademark. That is true regardless of whether there are other acronyms that use SP.
The Panel finds that the Domain Name is confusingly similar to Complainant’s trademark SPS COMMERCE.
Because it is difficult to produce evidence to support a negative statement, Complainant is simply required to make out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. WIPO Jurisprudential Overview 3.0, paragraph 2.1. The threshold to prove a lack of legitimate interests is low. Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (“unsupported assertions . . . are sufficient to make a prima facie showing in regard to the legitimacy element”).
Here, Complainant asserts little more than legal conclusions, but it is enough to meet this low threshold. In particular, Complainant alleges that Respondent has not been commonly known by the Domain Name. Complainant also asserts that it has searched “numerous trademark office records available worldwide” and found no application for a trademark on “spcommerce.” As it does throughout its Complaint in various formulations, Complainant also alleges that Respondent is using the Domain Name to “intentionally confuse” Complainant’s customers “for Respondent’s own gain.” With these assertions, Complainant has made out its prima facie case.
The burden of production thus shifts to Respondent to put forward evidence of its rights to or legitimate interests in the Domain Name. Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 8, 2000).
According to Paragraph 4(c) of the Policy, Respondent may demonstrate rights or legitimate interests in the Domain Name by showing any of the following circumstances:
(i) before any notice to [the Respondent] of the dispute, its use of, or demonstrable preparations to use, the Domain Name[s] or a name corresponding to the Domain Name[s] in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the Domain Name[s], even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the Domain Name[s], without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent argues that, before it received notice of this dispute, it both prepared to use and actually used the Domain Name in connection with a bona fide offering of e-commerce services.
Respondent specifically alleges that, in January 2014, more than three years before receiving notice of this dispute, it “initiated a project to come up with a second brand name for . . . its e-commerce business as well as all its other non-postal mail businesses.” This project, for which Respondent engaged two Singapore-based branding agencies and on which it spent $556,000 SGD, ultimately led to the selection of the brand name “SP Commerce.”
Respondent alleges that it obtained the Domain Name in July 2015. SP Commerce, Inc. was incorporated in November 2015, and the website to which the Domain Name resolves “officially went live” in January 2016. Respondent asserts that the website is “fully-operational” and offers services in “e-commerce technology, fulfillment [and] logistics, digital marketing and creative services, and customer care.” Respondent alleges that, since the launch of the SP Commerce brand, Respondent has spent approximately $275,000 to market the services offered on the Domain Name website, including by “distributing marketing materials” and by “developing the website content.” Declaration of Marcelo Wesseler, at ¶ 20.
The evidence Respondent has put forward undoubtedly establishes that Respondent has rights and legitimate interests in the Domain Name. Respondent has shown that, well before receiving any notice of the present dispute, it prepared to use the Domain Name in connection with offering e-commerce services by taking the following demonstrable steps, among others: engaging branding agencies to develop a new brand name, paying $3,500 SGD for the first year of ownership of the website, and developing and updating the Domain Name website.
Similar concrete steps, such as incorporation, the drafting of a business plan, the design of a website, or the creation of promotional materials, have been held sufficient to establish rights or legitimate interests in domain names. See World Wide Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001); cf. AutoNation Holding Corp. v. Alaweh, D2002-0058 (WIPO May 1, 2002) (finding that the respondent submitted “substantial, overwhelming and undisputed evidence” of its preparations); Titan Indus. Ltd. v. Tanishq Corp. D2000-1793 (WIPO Mar. 14, 2001) (finding that the respondent made demonstrable preparations where it received governmental certification and entered into business contracts).
Indeed, much of Respondent’s evidence goes beyond demonstrable preparation and establishes actual use of the Domain Name in connection with a bona fide offering of e-commerce services. In addition to the branding focus groups, marketing expenditure, and developing case studies and other digital content, Respondent actually offered e-commerce services via the Domain Name website.
Complainant nevertheless asserts that Respondent’s use is not bona fide because the use constitutes trademark infringement. Although it is true that an infringing use cannot be bona fide for purposes of establishing legitimate interests, Complainant has not adduced sufficient evidence to establish that Respondent’s use of SP Commerce (which, presumably, is in part an abbreviation of Singapore Post’s name), constitutes trademark infringement. The fact that Respondent may have attended a retail-confederation conference at which Complainant also was in attendance, at a time when Complainant already owned its SPS Commerce trademark, hardly is sufficient to prove infringement. Because Complainant has failed to establish on this record that Respondent’s use of the domain name is infringing, the Panel declines to find that Respondent’s use was not bona fide. If Complainant still believes that Respondent’s actions constitute trademark infringement, that is an issue it could pursue in court.
The Panel thus finds that Respondent has rights and legitimate interests in the Domain Name.
To prevail on this element, Complainant must establish both that Respondent registered the Domain Name in bad faith and that Respondent is using the Domain Name in bad faith. To have registered the Domain Name in bad faith targeted towards Complainant, Respondent must have been aware of, or at least willfully blind to, Complainant’s trademark rights.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out- of-pocket costs directly related to the domain name; or
(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent] intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.
In support of its assertion that Respondent registered the Domain Name in bad faith, Complainant alleges that, because Respondent and Complainant are competitors, and because Complainant has a significant presence in China and because one of Respondent’s investors is a Chinese company, Respondent must have known of Complainant and its SPS COMMERCE trademark in the United States.
Those arguments are unpersuasive. Complainant has not established that Respondent actually knew of Complainant—for example, there is no evidence that the parties have ever had contact with each other. Nor is there any evidence that Complainant or its brand is so well known that Respondent must have been aware of Complainant or its trademark.
In any event, Respondent credibly asserts that, before the filing of the Complaint, it had not known that Complainant existed. Wesseler Declaration, at ¶ 23. If Respondent had no knowledge of Complainant’s trademark at the time of registration, Respondent could not have registered the Domain Name in bad faith with respect to that mark. See Primal Quest, LLC v. Gabrial Salas, D2005-1083 (WIPO Dec. 15, 2005) (respondent could not have registered domain name in bad faith towards the complainant’s marks if it had not heard of the complainant or its service marks prior to registration).
In the alternative, Complainant asserts that Respondent’s registration was in bad faith because Respondent had constructive knowledge of Complainant’s trademark rights, under U.S. law. That argument also fails. First, there is no reason to apply U.S. law on constructive knowledge to a Singapore-based company. Second, in any event, although constructive knowledge may be a principle of U.S. law when assessing trademark infringement, constructive knowledge cannot be a substitute for actual knowledge, or willful blindness, for the purposes of establishing the type of actual knowledge required to prove bad faith registration.
As for bad faith use, Complainant alleges that Respondent targeted Complainant and intentionally created a likelihood of confusion between the Domain Name and Complainant’s trademark in order to attract Complainant’s customers for commercial gain. Complainant, though, offers no facts to support those speculative allegations. In any event, Respondent persuasively has established that it chose the Domain Name after conducting a lengthy and expensive branding study and that it has never intended—nor does it now intend—to sell the Domain Name to anyone. Wesseler Declaration, at ¶ 24.
For the foregoing reasons, the Panel finds that Respondent neither registered nor is using the Domain Name in bad faith.
Because Complainant failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <spcommerce.com> domain name REMAIN WITH Respondent.
David H. Bernstein,
Terry F. Peppard, and
David E. Sorkin, Panelists
Dated: May 24, 2017
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