SIMPLISAFE, INC. v. Domain Administrator
Claim Number: FA2201001980005
Complainant is SIMPLISAFE, INC. (“Complainant”), represented by CitizenHawk, Inc., Texas, USA. Respondent is Domain Administrator (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwsimplisafe.com>, registered with Above.com Pty Ltd..
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2022. The Forum received payment on January 11, 2022.
On January 16, 2022, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <wwwsimplisafe.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 January 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2022 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@wwwsimplisafe.com. Also on January 24, 2022, 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 February 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
Complainant, SIMPLISAFE, INC., offers home security products and services. Complainant has rights in the SIMPLISAFE mark based upon registration with numerous trademark authorities including the United States Patent and Trademark Office (“USPTO”). Complainant also has common law rights in the SIMPLISAFE mark based on its offering of security systems as early as 2006. The <wwwsimplisafe.com> domain name is identical or confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the <wwwsimplisafe.com> domain name. Respondent is not licensed or authorized to use Complainant’s SIMPLISAFE mark and is not commonly known by the domain name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to redirect users to a website owned by one of Complainant’s competitors, with which Respondent is affiliated.
Respondent registered the <wwwsimplisafe.com> domain name in bad faith with actual and/or constructive knowledge of Complainant’s rights in the SIMPLISAFE mark and uses the domain name in bad faith to direct users to Complainant’s competitor’s site. Respondent has also listed the domain name for sale. Respondent registered the domain name using falsified and/or incomplete WHOIS contact information and did not respond to Complainant’s cease-and-desist letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 has shown that it has rights in the SIMPLISAFE mark based upon numerous registrations, including with the USPTO, e.g Reg. No. 4,747,810, registered June 2, 2015. The Panel finds the <wwwsimplisafe.com> domain name to be confusingly similar to Complainant’s mark, merely adding to the mark the term “www”, which is insufficient to distinguish the domain name from the mark, and the inconsequential generic top-level domain (“gTLD”) “.com” which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The relevant time to determine whether Respondent has rights or legitimate interests in respect of the domain name is the date of the filing of the Complaint.
Respondent’s <wwwsimplisafe.com> domain name was registered on May 10, 2011. It resolves to a website at “www.vivint.com”, a direct competitor of Complainant.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <wwwsimplisafe.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The relevant time to determine whether the domain name has been registered in bad faith is the date of Respondent’s registration of the domain name and the relevant time to determine whether the domain name is being used in bad faith is the date of the filing of the Complaint.
It is clear that Respondent’s use of the domain name to resolve to a website at “www.vivint.com”, a direct competitor of Complainant, constitutes bad faith use within paragraph 4(b)(iv) of the Policy. Although such bad faith use is also evidence of bad faith registration, that evidence is not necessarily conclusive, since it may be weighed against any evidence of good faith registration. See Passion Group Inc. v. Usearch, Inc., eResolution Case No. AF-0250, followed in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905.
The critical issue in this proceeding is whether Respondent targeted Complainant’s mark when registering the <wwwsimplisafe.com> domain name on May 10, 2011. The earliest of Complainant’s SIMPLISAFE trademark registrations, USPTO Reg. No. 4,747,810, was registered on June 2, 2015, claiming first use in commerce on December 19, 2008.
Complainant asserts common law rights in the SIMPLISAFE mark based on its offering of security systems as early as 2006.
Complainant has shown that it registered the domain name <simplisafe.com> on May 19, 2006 and has used it since at least December 18, 2008 for a website featuring one of its SIMPLISAFE trademarks and its security system products. Complainant has also provided evidence of numerous third-party reviews of its products published in journals, including the New York Times, prior to the registration of Respondent’s <wwwsimplisafe.com> domain name. This evidence satisfies the Panel that Complainant had acquired, through use, common law trademark rights in the SIMPLISAFE mark prior to Respondent’s registration of the <wwwsimplisafe.com> domain name.
The Panel considers that, in addition to Complainant’s evidence, the structure of the domain name, comprising the entirety of Complainant’s <simplisafe.com> domain name preceded by “www” without a dot, supports the conclusion that Respondent must have been aware of Complainant’s <simplisafe.com> domain name and its incorporated SIMPLISAFE trademark when registering the <wwwsimplisafe.com> domain name in 2011 and that Respondent did so in bad faith.
Hence the Panel concludes that Respondent registered and is using the domain name in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwsimplisafe.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: February 22, 2022
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