Tarver Motor Company d.b.a. Lake Charles Toyota v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1812001819849
Complainant is Tarver Motor Company d.b.a. Lake Charles Toyota (“Complainant”), represented by Philip Tarver, Louisiana, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scionesports.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 December 7, 2018; the Forum received payment on December 7, 2018.
On December 10, 2018, Dynadot, LLC confirmed by e-mail to the Forum that the <scionesports.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. 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 December 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2019 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@scionesports.com. Also on December 12, 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 January 7, 2019, 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant provides a brand of entertainment unique to its area, hosting and managing video game tournaments and events, commonly known as e-sports. Complainant has rights in the SCION ESPORTS mark through its registration of the mark with the Louisiana Secretary of State (registered Dec. 12, 2018). See Amend. Compl. Appendix. Respondent’s <scionesports.com> domain name is identical to Complainant’s SCION ESPORTS mark.
ii) Respondent has no rights or legitimate interests in the <scionesports.com> domain name. Respondent, the current domain holder, uses the domain name to offer a website that has absolutely nothing to do with esports, and in fact it appears to be a generic template site of some sort. Complainant was the prior owner of the domain name until it allowed the domain name to expire.
iii) Respondent registered and uses the <scionesports.com> domain name in bad faith. Complainant previously owned the domain name until it inadvertently allowed the registration to lapse. Further, Respondent has made no attempt to develop any content on the website related to the domain. Additionally, Respondent has failed to respond to Complainant’s efforts to contact Respondent regarding the domain name, and appears to have registered the domain name in efforts to extract money from Complainant.
B. Respondent
Respondent did not submit a response in this proceeding.
1. Respondent registered the <scionesports.com> domain name on November 23, 2018.
2. Complainant has established rights in the SCION ESPORTS mark through its registration of the mark with the Louisiana Secretary of State (registered Dec. 12, 2018).
3. The disputed domain name is resolved to a website featuring various plants and flowers.
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 SCION ESPORTS mark through its registration of the mark with the Louisiana Secretary of State (registered Dec. 12, 2018). See Amend. Compl. Appendix. Registration of a mark with a state authority sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See The W.J. Baker Company v. c/o BAKERTUBULAR.COM, FA 1481278 (Forum Feb. 26, 2013) (finding that Complainant’s registration of the BAKER TUBULAR METAL PRODUCTS mark through its registration with the Kentucky Secretary of State was sufficient to establish rights in the mark). Accordingly, the Panel finds that Complainant has established rights in the SCION ESPORTS mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <scionesports.com> domain name is identical to Complainant’s mark. A domain name fully incorporating a complainant’s mark with no additions outside of a generic top-level domain (“gTLD”) generally fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel therefore finds that the <scionesports.com> domain name is identical to the SCION ESPORTS mark under 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 <scionesports.com> domain name as Respondent uses the domain name to offer a website that has absolutely nothing to do with esports, and in fact it appears to be a generic template site of some sort. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant does not provide any evidence of Respondent’s use of the domain name. As a result of the Panel’s conducting an independent search, the Panel notes that the disputed domain name is resolved to a website featuring various plants and flowers. The Panel agrees that Respondent uses the disputed domain name to offer a website that has absolutely nothing to do with esports, and in fact it appears to be a generic template site of some sort. Accordingly, the Panel finds that Respondent’s use of the disputed domain name to offer a website that has nothing to do with esports evinces its lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
Next, Complainant claims that it was the prior owner of the <scionesports.com> domain name until it allowed the domain name to expire. A respondent who registers a domain name previously held by a complainant can be found to lack rights and legitimate interests in that domain name. See Raise Labs, Inc. v. Hong young jin, FA 1685247 (Forum Sept. 1, 2016) (“[The disputed domain name was] registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date… 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 name.”). Complainant provides screenshots of the webpage it allegedly hosted prior to Respondent’s subsequent registration of the domain name. The Panel finds that Complainant was the prior owner of the disputed domain name until it allowed the domain name to expire, indicative of Respondent’s lack of rights and legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
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 name.
The Panel notes that Respondent’s registration of the <scionesports.com> domain name (registered on November 23, 2018) predates Complainant’s first claimed rights in the SCION ESPORTS mark (registered on December 12, 2018). When the registration of a disputed domain name predates Complainant’s trademark rights, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. However, the Panel notes that the date of the first use as recorded on the service mark register of Complainant's mark is January 1, 2018 which predates the registration of the disputed domain name; Complainant previously owned the domain name until it inadvertently allowed the registration to lapse; and subsequently Respondent registered the disputed domain name. Given the circumstances above, even though the registration of the disputed domain name predates for a few weeks the registration of Complainant's mark, the Panel finds that Complainant can prove registration in bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <scionesports.com> domain name in bad faith as Complainant previously owned the domain name until it inadvertently allowed the registration to lapse. A complainant may argue that it previously owned a domain name currently owned by a respondent to show bad faith on the part of respondent. See John Dilks v. PRIVACY ADMINISTRATOR / ANONYMIZE, INC., FA1506001623023 (Forum July 10, 2015) (Where the complainant was the former owner of the domain name, this raises a rebuttable presumption of bad faith registration). Complainant provides screenshots of the webpage it allegedly hosted prior to Respondent’s subsequent registration of the domain name. Accordingly, the Panel finds that Complainant used to own the domain name prior to Respondent obtaining the domain name, indicative of Respondent’s bad faith under Policy ¶ 4(a)(iii).
Further, Complainant claims that Respondent has made no attempt to develop any content on the website related to the domain. Failure to develop a website for an identical domain name can evince bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant does not provide any evidence of Respondent’s use of the domain name. As a result of the Panel’s conducting an independent search, the Panel notes that the disputed domain name is resolved to a website featuring various plants and flowers. The Panel agrees that Respondent uses the disputed domain name to offer a website that has absolutely nothing to do with esports, and thus it agrees that Respondent’s failure to develop the disputed domain name in relation to ‘esports’ demonstrates Respondent’s bad faith under the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <scionesports.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 12, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page