Spase, Inc. v. Domain Admin / Mrs Jello, LLC
Claim Number: FA2011001921922
Complainant is Spase, Inc. (“Complainant”), represented by Sahil Gupta, United States. Respondent is Domain Admin / Mrs Jello, LLC (“Respondent”), represented by Greenberg & Lieberman, LLC, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spase.com>(‘the Domain Name’), registered with eNom, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 24, 2020; the Forum received payment on November 24, 2020.
On November 25, 2020, eNom, LLC confirmed by e-mail to the Forum that the <spase.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 November 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2020 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@spase.com. Also on November 30, 2020, 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 December 23, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s relevant contentions can be summarised as follows:
The Complainant owns common law rights in the mark SPASE, having used it since 2009 in the field of augmented reality services and as recognised in a previous decision of this case before WIPO. See WIPO Case No. D2020-1786 Spase vs Mrs Jello (‘the WIPO Case’).
The Domain Name matches the Complainant’s mark.
The Respondent is using the Domain Name to distribute malware, which is not a bona fide offering of goods or services and is bad faith use targeting the Complainant. The Respondent is not commonly known by the Domain Name.
The Respondent has used a privacy service which is also an indication of bad faith registration.
The Panel in the WIPO Case denied the complaint on the grounds of no evidence of bad faith registration. The Panel also stated the Complainant had committed Reverse Domain Name Hijacking. The Complainant provides this information in order to be fully transparent.
The Respondent’s website is now blocked by the registrar due to the presence of malware. This material evidence was unavailable to the Complainant during the original case.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns common law rights in the mark SPASE for augmented reality services having used the mark since early 2019.
The Domain Name registered in 2005 has been used for malware. The Respondent has been the subject of adverse rulings in unrelated cases under the UDRP.
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”).
The Complainant owns common law rights in the SPASE mark for augmented reality services having used the mark since early 2019.
The gTLD ".com" does not serve to distinguish the Domain Name from the Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is identical for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
The Complainant has not given any permission for use of SPASE. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Domain Name has been used to disseminate malware. The use of a disputed domain name to disseminate malware does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”).
As such the Panel holds that the Respondent does not have rights or legitimate interests in the Domain Name.
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 registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
It is important to note that both registration and use in bad faith are required and all criterion require that the Complainant in the case should be targeted by the registration of the Domain Name.
The Respondent has been the subject of adverse decisions under the UDRP where bad faith registration and use was found in relation to domain names not connected to this case. This shows a pattern of activity, but does not show that, as required by 4(b)(ii), the Complainant was targeted and that the respondent 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. This could not be the case as the Domain Name was registered 14 years before the Complainant had any rights in the name SPASE. Indeed the Complainant failed to prove bad faith in the WIPO Case.
The Complainant says that there is new evidence in this case that the Domain Name has been used for malware and that will enable him to now succeed in proving bad faith under the third limb of the Policy.
Use of a domain name for malware is use of a domain name in bad faith. See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015).
However, to get home on the third limb of the Policy the Complainant must show that the Domain Name was both registered AND used in bad faith. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
In this case the Domain Name was registered in 2005 long before the Complainant began use of and had rights in the SPASE name.
As such there is no evidence that the Respondent targeted the Complainant and could not have known of the Complainant, its business, rights or services at the time of registration of the Domain Name. The Domain Name cannot have been registered in bad faith to target the Complainant as required for the Complainant to succeed under the Policy.
As a result of the WIPO Case the Complainant must have been aware that the Domain Name could not have been registered in bad faith as the Complainant lacked the relevant rights in the SPASE name at the time of registration of the Domain Name. As such the Panel has no alternative but to hold that this Complaint is a case of Reverse Domain Name Hijacking.
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 <spase.com> domain name REMAIN WITH Respondent.
Dawn Osborne, Panelist
Dated: December 23, 2020
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