Delbert R. Terrill Jr. v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org)
Claim Number: FA1803001775784
Complainant is Delbert R. Terrill Jr. (“Complainant”), represented by Darius Patel, Ontario, Canada. Respondent is Domain Admin / Privacy Protect, LLC (PrivacyProtect.org) (“Respondent”), represented by Mian Chi Du, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snn.com>, registered with World Biz Domains, 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2018; the Forum received payment on March 14, 2018.
On March 14, 2018, World Biz Domains, LLC confirmed by e-mail to the Forum that the <snn.com> domain name is registered with World Biz Domains, LLC and that Respondent is the current registrant of the name. World Biz Domains, LLC has verified that Respondent is bound by the World Biz Domains, 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 March 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2018 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@snn.com. Also on March 19, 2018, 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 20, 2018.
On March 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Delbert R. Terrill Jr., has been using the Summerhome News Network and associated domain name <snn.com> since early 2002. Complainant has common law rights in the SNN mark by virtue of its longstanding use of the <snn.com> domain name. Respondent’s domain name is identical to Complainant’s SNN mark.
Respondent has no rights or legitimate interests in the <snn.com> domain name. Respondent used identity fraud and social engineering to obtain ownership of the domain name. See Compl. Ex. D (Timeline of Theft).
Respondent registered and is using the <snn.com> domain name in bad faith. The domain name was probably hijacked in order to sell to a third party, as 3-letter domain names are very valuable in the industry. Further, Respondent’s behavior in stealing the domain name itself indicates bad faith. Finally Respondent’s manner of stealing the domain name, through provision of false identification, demonstrates Respondent knew of Complainant at the time it gained control of the domain name.
B. Respondent
Respondent made the following contentions.
1. The disputed domain name is not identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant’s company name is Summerhome News Network which is not the same as <snn.com>.
2. As Complainant’s company is Summerhome News Network which is not the same as <snn.com>, the disputed domain name does not infringe Complainant's rights.
3. The disputed domain name should not be considered as having being used in bad faith.
4. Respondent acquired the disputed domain name legitimately, renewed the registration with the concerned registrar and paid all sums invoiced.
5. Respondent has the right to sell the domain name and it is not being used in bad faith.
1. Complainant is resident in the United States of America and claims that he owned and used the domain name from 2002 until it was allegedly stolen in 2017.
2. Respondent is resident in China and submits that he bought the domain name legitimately and has paid the related registration fee.
3. The disputed domain name was created on October 16, 1995 and Respondent is its current registrant.
4. The domain name resolves to a website that carries links to third party goods and services.
5. Complainant does not have a relevant registered trademark and has adduced no evidence showing that he has a relevant common law or unregistered trademark.
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.
It is pivotal to the workings of the UDRP that a complainant bringing a claim for a domain name must first establish that it has a trademark or service mark on which it can rely in the proceeding. That is not something over which the Panel has any control as it is a requirement of the UDRP system itself. Moreover, the Policy provides that the complainant must establish that the disputed domain name is identical or confusingly similar to that trademark or service mark.
The usual course followed by complainants to prove this requirement is to adduce evidence of a registered trademark. If that is done, panels generally accept that the registration of the trademark with a national or international authority is sufficient to establish standing to file the complaint.
In the present case, Complainant does not submit that it has a relevant registered trademark.
That is not fatal to Complainant’s case, however, as it is open to Complainant to show that it has an unregistered or common law trademark. There are many previous UDRP decisions where panels have decided that common law or unregistered trademarks are sufficient.
Complainant submits that it has a common law trademark in SNN and, if that is established, Complainant will have standing to bring the complaint. The specific submission by Complainant is that it “owns common law rights in the SNN mark…”.
Common law trademarks can be established only by evidence. The evidence must show that the alleged trademark was recognized as such by the community or part of it and to the extent that it had two meanings, a primary meaning and also a secondary meaning that linked the domain name to Complainant and its goods and services.
Complainant submits that its evidence is that from 2002 it owned and used the <snn.com> domain name for the purposes of letting out a property in Michigan and that it did so until 2017 when, Complainant submits, the domain name was stolen and the registration changed. That is the only evidence adduced by Complainant.
The Panel finds that the evidence adduced is not sufficient to show that Complainant has trademark rights in SNN. Complainant’s submission is in effect that the Wayback Machine at www.archive.org shows that Complainant has a common law trademark in SNN and used it as such. Looking at the series of screenshots on the Archive website for the period during which Complainant owned and controlled the domain name, it is clear that Complainant did not use the letters SNN in a separate or stand-alone form that might suggest that Complainant was using SNN as its trademark. The screenshots certainly carry the expression Summerhome News Network, albeit with the first letter of each word in capitals. There is, however, nothing on the site to show that the public or part of it probably regarded SNN or <snn.com> as the mark or sign under which Complainant promoted and sold its goods and services with respect to letting the property in question. This can be shown and usually is shown in similar cases by invoices, sales figures, promotional literature and media reports that reflect the use of the trademark that is claimed and its recognition as a trademark. None of that evidence was forthcoming in the present case. Indeed, the little evidence that there is suggests the opposite of what Complainant must prove. As has already been pointed out, the expression SNN is not used on the site at all. Moreover, the details on the site under “Contact” show that potential customers were invited to contact, not SNN, <snn.com> or even Summerhome News Network, but chipterrill@wisl.org. Thus, the mark or sign SNN was not used by Complainant in promoting its business, which has to be shown if a trademark in SNN is to be made out. Nor is this a minor or theoretical consideration, as Complainant has to show that the disputed domain name is identical or confusingly similar to the trademark relied on, which is SNN.
In the absence of common law or unregistered trademark rights or a registered trademark, the Panel is obliged to find that Complainant has not established rights in the SNN mark for the purposes of Policy ¶ 4(a)(i). Complainant therefore has no standing to bring the present claim.
As the Panel has concluded that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in a trademark , the Panel will not proceed to analyze the other two elements of the Policy or make any comments on the case presented by Complainant on those issues. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (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 Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (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)).
Complainant will therefore have to bring court proceedings if it wishes to pursue the present claim, but that of course is a matter on which Complainant must obtain its own advice.
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 <snn.com> domain name REMAIN WITH Respondent .
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 2, 2018
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