TechSmith Corporation v. Domain Sales - (Expired domain caught by auction winner) c/o Dynadot
Claim Number: FA1810001810837
Complainant is TechSmith Corporation (“Complainant”), represented by James R. Duby of DUBY LAW FIRM, Michigan, USA. Respondent is Domain Sales - (Expired domain caught by auction winner) c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <techsmithcapture.com> and <techsmithmotion.com>, registered with Dynadot, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 8, 2018; the Forum received payment on October 8, 2018.
On October 16, 2018, Dynadot, LLC confirmed by e-mail to the Forum that the <techsmithcapture.com> and <techsmithmotion.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 October 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@techsmithcapture.com, postmaster@techsmithmotion.com. Also on October 22, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant owns and operates a technology business that sells its goods and services in connection with the TECHSMITH mark. Complainant has rights in the TECHSMITH mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,749,869, registered Feb. 2, 1993). See Compl. Annex A. Respondent’s <techsmithcapture.com> and <techsmithmotion.com> domain names are confusingly similar to Complainant’s TECHSMITH mark as Respondent incorporates the mark in its entirety while adding the generic or descriptive terms “capture” and “motion” and a “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <techsmithcapture.com> and <techsmithmotion.com> domain names. Respondent is not authorized or licensed to use Complainant’s TECHSMITH mark and is not commonly known by the disputed domain names. Additionally, Respondent attempts to sell the disputed domain names for more than out-of-pocket costs.
iii) Respondent registered and uses the <techsmithcapture.com> and <techsmithmotion.com> domain names in bad faith. Respondent attempts to sell the disputed domain names for more than out-of-pocket costs. Furthermore, Respondent fails to actively use the disputed domain names.
B. Respondent
Respondent did not submit a response.
1. Complainant has established rights in the TECHSMITH mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,749,869, registered Feb. 2, 1993).
2. The <techsmithcapture.com> and <techsmithmotion.com> domain names were both registered on August 14, 2018.
3. The disputed domain names’ resolving websites offer the disputed domain names for $988.00.
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.”).
Complainant claims rights in the TECHSMITH mark based upon registration of the mark with the USPTO (e.g., Reg. No. 1,749,869, registered Feb. 2, 1993). See Compl. Annex A. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the TECHSMITH mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <techsmithcapture.com> and <techsmithmotion.com> domain names are confusingly similar to the TECHSMITH mark, as the name adds the terms “motion” or “capture” and a “.com” gTLD. Adding a generic or descriptive term and a gTLD is not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”). The Panel therefore determines the <techsmithcapture.com> and <techsmithmotion.com> domain names are confusingly similar to the TECHSMITH mark per Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <techsmithcapture.com> and <techsmithmotion.com> domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the TECHSMITH mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Domain Sales - (Expired domain caught by auction winner) c/o Dynadot,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <techsmithcapture.com> and <techsmithmotion.com> domain names.
Additionally, Complainant further argues Respondent’s lack of rights or legitimate interests in the <techsmithcapture.com> and <techsmithmotion.com> domain names is demonstrated by its failure to use the names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent intentionally uses the disputed domain names to resolve to webpages offering the domain names for sale. Use of a disputed domain name to sell the domain name for more than out-of-pock costs may evince a finding that the respondent fails to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides copies of the disputed domain names’ resolving websites which offer them for $988.00. See Compl. Annex C. Therefore, the Panel finds Respondent does not make a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant asserts Respondent registered and uses the <techsmithcapture.com> and <techsmithmotion.com> domain names in bad faith. Specifically, Complainant contends Respondent’s only purpose in registering the disputed domain names was to gain commercially from the sale of the same, indicating its registration and sue of the name in bad faith. The Panel recalls that Complainant has provided copies of the disputed domain names’ resolving websites which offer them for $988.00. A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Complainant contends that given its longstanding trademark registration of the TECHSMITH mark, and Respondent’s current use of the domain name to offer to sell the name (see Compl. Annex C), it is evident Respondent’s purpose for registering and using the domain name was and is to sell the name for a profit. The Panel agrees and finds Respondent to have registered and used the <techsmithcapture.com> and <techsmithmotion.com> domain names in bad faith per Policy ¶ 4(b)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <techsmithcapture.com> and <techsmithmotion.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 18, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page