Salyer Companies v. Ron Jones / Sleepy Owl Productions
Claim Number: FA1907001850607
Complainant is Salyer Companies (“Complainant”), represented by Leonard Searcy of Shook, Hardy & Bacon LLP, Missouri, USA. Respondent is Ron Jones / Sleepy Owl Productions (“Respondent”), Kansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <salyercompany.com> and <salyercompanies.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2019; the Forum received payment on July 1, 2019.
On July 2, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <salyercompany.com> and <salyercompanies.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 July 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@salyercompany.com, postmaster@salyercompanies.com. Also on July 5, 2019, 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 July 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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
Complainant asserts rights in the SALYER COMPANY and SALYER COMPANIES marks based upon common law rights in the marks. Respondent’s <salyercompany.com> and <salyercompanies.com> domain names are identical or confusingly similar to Complainant’s SALYER COMPANY and SALYER COMPANIES marks because they wholly incorporate Complainant’s SALYER COMPANY and SALYER COMPANIES marks, and merely add the “.com” generic top-level domain (“gTLD”) and delete the spaces. Complainant provided evidence that its Salyer Companies business entity is active and in good standing.
Respondent lacks rights or legitimate interests in the <salyercompany.com> and <salyercompanies.com> domain names. Respondent is not authorized to use Complainant’s SALYER COMPANY and SALYER COMPANIES marks and is not commonly known by the disputed domain names. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain names to extort unpaid invoice payments from Complainant.
Respondent registered and uses the <salyercompany.com> and <salyercompanies.com> domain names in bad faith. Respondent registered the disputed domain names at Complainant’s request, but did so in Respondent’s own name without Complainant’s knowledge or consent. Furthermore, Respondent has refused to transfer the disputed domain names to Complainant. Finally, Respondent had actual knowledge of Complainant’s SALYER COMPANY and SALYER COMPANIES marks prior to registering the disputed domain names because of Respondent’s working relationship with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered both disputed domain names on Jan. 8, 2005.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant does not allege or provide evidence of any trademark registrations that it owns with a national trademark authority. However, Complainant asserts common law rights to the terms SALYER COMPANY and SALYER COMPANIES. While Complainant has demonstrated that a company by the name of Salyer Companies is incorporated in the state of Kansas, the Policy does not apply to trade names. See John County Siding & Window Co., Inc. v. Diamond Contracting, Inc. FA1443590 (June 25, 2012) (“The use of trade name by complainant is insufficient to establish rights under ¶ 4(a)(i) of the Policy”.) Neither has Complainant shown its use of the SALYER COMPANY and SALYER COMPANIES terms as trademarks, and certainly has not shown documentary evidence of the continuous and extensive use of trademarks as required to establish secondary meaning so as to create common law rights. See Molecular Nutrition, Inc. v. Network News & Publ’ns, FA156715 (Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such right are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also Weatherford Int’l, Inc. v. Wells, FA153626 (Forum May 19, 2003) (holding that UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence or statements of proof).
Thus, Complainant has not satisfied Policy ¶ 4(a)(i).
Because this Panel has determined that Complainant has not satisfied Policy ¶ 4(a)(i), there is no need for the Panel to decide whether Respondent has rights or legitimate interests in the domain names or whether Respondent registered and used the domain names in bad faith.
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 <salyercompany.com> and <salyercompanies.com> domain names REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: July 31, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page