TechSmith Corporation v. Sergio Hernandez
Claim Number: FA2306002050171
Complainant is TechSmith Corporation (“Complainant”), represented by James R. Duby of DUBY LAW FIRM, Michigan, USA. Respondent is Sergio Hernandez (“Respondent”), represented by Andrew Keyes of ROME LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <screencast.ai>, registered with NameCheap, Inc..
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil-Jimenez as Panelist.
Complainant submitted a Complaint to Forum electronically on June 22, 2023; Forum received payment on June 22, 2023.
On June 22, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <screencast.ai> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 June 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2023 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@screencast.ai. Also on June 23, 2023, 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.
A timely Response was received and determined to be complete on August 7, 2023.
On August 10, 2023, the Complainant filed a supplemental submission,
in compliance with Supplemental Rule 7.
On August 9, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Luz Helena Villamil-Jimenez as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 informs that TechSmith has been in business for over 30 years, and it is the owner of the U.S. Federal Certificates of Registration for the marks Screencast.com®, U.S. Reg. No. 3510618 registered on October 7, 2008, and Screencast®, U.S. Reg. No. 5595914, registered on October 30, 2018. TechSmith registered the domain name <screencast.com> as early as June 20, 2002.
The Complainant also mentions that TechSmith uses the marks Screencast.com® and Screencast® in connection with international classes 009 and 042 in connection with computer services and has done so in interstate commerce at least as early October 17, 2006 (Screencast.com®) and February 15, 2018 (Screencast®), respectively.
According to the Complainant, the Screencast.com® and Screencast® marks are well-known throughout the world as it has users in over 222 countries or territories, with its award winning products and services being used by 100% of the Fortune 500 companies, resulting in over 65 million users worldwide using TechSmith’s products and services, with users that includes trainers, teachers, marketers and other professionals.
The Disputed Domain Name <screencast.ai> has been and is being offered for sale generally on Dan.com and GoDaddy respectively for $5000, a sum well in excess of registration costs, and this action is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Disputed Domain Name <screencast.ai> itself is identical and/or confusingly similar to TechSmith’s U.S. registered marks Screencast.com® and Screencast® except for the addition of the and the top-level domain (ccTLD”) “.AI”. Such trivial differences between Respondent’s Disputed Domain Name <screencast.ai> and Complainant’s “Screencast.com” and “Screencast” service marks are insufficient to distinguish one from the other for the purposes of the Policy.
The Respondent has no rights or legitimate interests to the Disputed Domain Name <screencast.ai> since registration thereof occurred well after the date TechSmith started using the marks “Screencast.com” and “Screencast” in the United States and throughout the world, and Respondent’s date of first use being no earlier than 2023. Moreover, the Respondent is not commonly known by the Disputed Domain Name <screencast.ai>.
The Respondent registered and is using the disputed Domain Name <screencast.ai> in bad faith, in as much as said domain name is confusingly similar to the Complainant’s mark, and this demonstrates a bad faith attempt to confuse and attract for commercial gain. Since the domain name is being offered for sale, the Respondent registered and is using it in bad faith primarily for the purposes of sale for profit.
Finally, it is contended in the Complaint that the Complainant has a reputation for computer software and services across the world, and therefore it is likely that the Respondent was aware of TechSmith’s rights at the time the disputed domain name <screencast.ai> was registered.
B. Respondent
In his response, Respondent contends that the term “screencast” is merely descriptive and is generic to the general consuming public when used for Complainant’s computer services and on used on Complainant’s own website. The term screencast is currently in extensive, pervasive, and common use to describe a computer function, a digital recording of a computer screen’s display. A merely descriptive or a generic trademark is allowed no protection under U.S. trademark law.
According to the Respondent, the “genericide” of the term “screencast” defeats Complainant’s claim to the <screencast.ai> domain name in its entirety, despite Complainant’s alleged registered Screencast Marks.
Respondent asserts that the consumer perception of the term “screencast” is that the term refers to a common computer service, rather than any one provider of such service, thus nullifying the Screencast Marks by way of genericide. The Complainant’s services listed under U.S. Reg. No. 3510618 for the mark Screencast.com are “[c]omputer services, namely, hosting online web facilities and applications for others for the sharing of digital screenshots and digital audio, video, textual and multimedia content”. The services listed under U.S. Reg. No. 5595914 for the mark Screencast are also for identical, closely related, and similar computer services.
According to the Respondent, a Google search for the term “screencast” results in links to numerous webpages that use the term “screencast” to generically refer to a service. The Respondent adds that in the event that the TechSmith Marks are not deemed to be generic, the marks are still unenforceable against Respondent due to their plainly descriptive nature. A word that "merely describes" the goods or services on or in connection with which it is used is not registrable on the Principal Register.
According to the Respondent, Panels have repeatedly held that “common words and descriptive terms are legitimately subject to registration as domain names on a ‘first come, first served’ basis.” The term “screencast” is a generic term for “digital recording of computer screen or output”, and due to the genericness of “screencast” and/or the merely descriptive nature of the alleged marks, Respondent had a legitimate interest in the domain name <screencast.ai> by being the first to register that domain.
Respondent asserts that ICANN precedent has established that neither mere registration, nor general offers to sell, domain names which consist of generic, common, or descriptive terms can be considered acts of bad faith.
Lastly, it is contended that Respondent registered the <screencast.ai> domain name in anticipation of establishing new product offerings wholly separate and distinct from Complainant’s purported marks. By registering a domain name containing the generic and/or merely descriptive term “screencast” in connection with a bona fide future business venture, Respondent registered the <screencast.ai> domain name in good faith.
C. Additional Submissions
In his Additional Submission the Complainant asserts that while Respondent contends that the <screencast.ai> domain name is comprised of common and generic terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. TechSmith owns U.S. Principal Registrations for the marks SCREENCAST.COM® and SCREENCAST® respectively, and registration carries with it a presumption that the mark is valid (i.e., not generic.) As great deference is given to the United States Patent and Trademark Office, the administrative agency charged with responsibility for determining the registrability of marks, TechSmith has demonstrated rights in the marks SCREENCAST.COM® and SCREENCAST® by virtue of its federal principal registrations.
Complainant states that although the Respondent’s discussion on “genericness” in his Response is misplaced in this case, given the terms and conditions of the Policy and Rules governing these, it should be noted that to prove a mark “generic” as asserted by the Respondent in his Response, the Respondent must show by a preponderance of evidence that the public does not understand the term Screencast® or Screencast.com® as a trademark or service mark, that is, as identifying the computer services at issue, coming from a single source, that being TechSmith. “Genericness” is not proven just because consumers may ask for the product or service by the mark.
Complainant contends as well that Respondent has not provided any evidence of Respondent’s common, descriptive, or generic use of the <screencast.ai> disputed domain name, unlike the authority cited by the Respondent. To the contrary, the Respondent registered the <screencast.ai> domain name containing the Complainant’s mark(s) “screencast.com” and “screencast” in their entirety (essentially identical) and the domain name has been and is being offered for sale generally through Dan.com and GoDaddy, respectively for $5000, a sum well in excess of registration costs, without TechSmith’s permission.
In the Complainant’s words, Respondent either knew the disputed domain name was identical to TechSmith’s registered service marks or neglected to perform a simple Internet search. Either way, Respondent failed to discharge his duty to select, register, and use a domain name that does not infringe the rights of a third party.
The Panel has thoroughly reviewed the Complaint together with the evidence submitted to support the allegations, the Response to the Complaint filed by the Respondent and the Additional Submission filed by the Complainant, and based on all the documents, the Panel finds:
- That Complainant is the exclusive owner of the trademarks Screencast.com®, U.S. Reg. No. 3510618 dated October 7, 2008, and Screencast®, U.S. Reg. No. 5595914 dated October 30, 2018, and that said trademarks are presently in use in connection with computer services.
- That the domain <screencast.com> was registered on June 20, 2002 and it is in use for hosting online web facilities and applications for others for desk top and lap top computers and mobile devices, namely mobile phones, portable media players, and handheld computers, for video and screen capture and the creation of multimedia content in malleable form for sharing, consumption and analysis.
- That the disputed domain name was registered on February 8, 2023, and is for sale, being the amount of USD 5.000 the minimum offer set.
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.
Complainant demonstrated with the trademark registrations copies submitted with the Complaint that it is the exclusive owner of the word marks Screencast.com®, U.S. Reg. No. 3510618 dated October 7, 2008, and Screencast®, U.S. Reg. No. 5595914, dated October 30, 2018. In addition, it was demonstrated that the mentioned trademarks are used in use in connection with online web facilities and applications for others for desk top and lap top computers and mobile devices, namely mobile phones, portable media players, and handheld computers, for video and screen capture and the creation of multimedia content in malleable form for sharing, consumption and analysis.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name <screencast.ai> because (i) Complainant has not authorized Respondent to use its SCREENCAST and SCREENCAST.COM marks, (ii) Respondent has not been commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, but instead it is for sale for an amount that substantially exceeds the registration costs which evidences the Registrant’s intention to attract consumers for commercial gain.
In this concern, the Examiner does not accept at all the Respondent’s argument that “Complainant has no exclusive rights to the term “screencast” because “screencast” is a generic term whose primary meaning to the public is a common computer function, a digital recording of a computer screen display, rather than for any particular source of the services listed under the alleged Registrations.” On the contrary, the Complainant’s marks SCREENCAST.COM and SCREENCAST are registered trademarks which are in full force and effect as evidenced by the certificates of registration submitted with the Complaint.
The “genericide” argument in the Response to the Complaint cannot be accepted in the present case. The Panel accepts that in certain cases trademarks can lose their distinctive character and can become generic, but the genericness of a trademark registration does not occur automatically. In other words, a trademark is not generic or descriptive just because someone says so, since according to the applicable provisions trademark registrations are enforceable against third parties as long as they continue to be alive. Thus, if a particular trademark registration or registrations are not cancelled through the adversarial procedure provided by the applicable regulations, any usage thereof by third parties will be subject to potential trademark infringement claims.
In the present case, while Complainant has demonstrated that its trademarks are widely used and have become known by consumers due to the type of services being offered, the Respondent seeks to justify its behavior by the alleged genericness of the trademarks on which the Complaint relies. In other words, under the line of reasoning of the Respondent, the recognition of the Complainant’s marks merits the declaration of their genericness as a punishment for their success.
As this Panel sees it, when the Respondent registered the domain name <screencast.ai> he also took some time to prepare an argument based on the genericity to respond to any potential complaint based on the similarity of said domain with the registered trademarks SCREENCAST and SCREENCAST.COM and the website identified with the domain name <screencast.com>. However, the Panel does not accept the Respondent’s defense that “the registrant of a domain name consisting of a descriptive term has a legitimate interest in that domain name by virtue of being the first one to register that domain name”. As noted above, the disputed domain name is neither generic nor descriptive but instead consists of a registered trademark, and therefore the Respondent has no right or legitimate interest in the domain name <screencast.ai>.
In light of the foregoing, the Panel considers that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as the Respondent has no rights or legitimate interests in respect of the domain name <screencast.ai>.
According to Paragraph 4(b) of the Policy, certain circumstances are evidence of bad faith in the registration and use of a given domain name. Among such circumstances the Policy mentions in Paragraph 4(b)(iv): using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s site or location or of a product or service on the Respondent’s web site or location.
In the present case, the disputed domain name <screencast.ai> reproduces the registered trademarks SCREENCAST.COM and SCREENCAST, a fact that clearly evidences a prima facie intention of the Respondent to attract internet users for a commercial gain. In turn, commercial benefit would be a fact if the Respondent could actually sell the domain name at the price at which it is offering it, or if possible, at a higher price, which would not be impossible given the recognition of the Complainant’s marks.
The virtually identical reproduction of a third party’s distinctive mark within a domain name is hardly the result of casualty, and to the contrary suggests a clear intention to cause confusion to those who have access to the name, and thus benefit from said confusion.
In light of the foregoing, the Panel again cannot accept the Respondent’s defense based on that “ICANN precedent has established that neither mere registration, nor general offers to sell, domain names which consist of generic, common, or descriptive terms can be considered acts of bad faith”. The premise supporting this assertion is not sustained since SCREENCAST.COM and SCREENCAST are registered, valid and duly protected marks, and therefore the registration of a domain name substantially identical to said marks for the purpose of selling it evidences that the domain name was registered and is being used in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <screencast.ai> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil-Jimenez, Panelist
Dated: August 22, 2023
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