Site Analytics Co. v. Digital Address / THIS DIGITAL ADDRESS MAY BE FOR SALE
Claim Number: FA2302002033344
Complainant is Site Analytics Co. (“Complainant”), New York, USA. Respondent is Digital Address / THIS DIGITAL ADDRESS MAY BE FOR SALE (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <siteanalytics.com>, registered with Name.com, Inc..
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.
Mrs. Nathalie DREYFUS as Panelist.
Complainant submitted a Complaint to Forum electronically on February 24, 2023; Forum received payment on February 24, 2023.
On March 2, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <siteanalytics.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 March 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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@siteanalytics.com. Also, on March 6, 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 found compliant on March 15, 2023.
On March 21, 2023, Complainant submitted supplemental observations further to Respondent’s observations.
On March 20, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nathalie Dreyfus 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, Site Analytics Co., provides analytics services and claims rights to the SITE ANALYTICS trademark.
Complainant argues that a registered trademark isn't necessary under the common law, as the trademark has acquired a secondary meaning.
The Disputed Domain Name is identical to Complainant's trademark because it includes the entire trademark and appends the generic top-level domain (gTLD) ".com".
Respondent doesn't possess rights or legitimate interests in the Disputed Domain Name. Respondent is neither licensed nor authorized to use Complainant's trademark and are not commonly recognized by the Disputed Domain Name. Furthermore, Respondent lacks rights and legitimate interests by offering the domain up for sale.
Respondent's registered and uses the Disputed Domain Name in bad faith. This can be clearly evidenced by Respondent's specific offer to sell the Disputed Domain Name.
B. Respondent
Respondent's primary activity involves purchasing and trading domain names. Meanwhile, Complainant has been unsuccessful in proving their ownership of the SITE ANALYTICS trademark.
For Respondent, Complainant neglected to renew the registration for the Disputed Domain Name on October 11, 2022, causing their online presence to disappear and their business to cease operations from October 12, 2022. Respondent acquired the Disputed Domain Name through an expired domain name auction at <SnapNames.com> on November 19, 2022, and upon the auction's conclusion. Respondent considers that all rights and legitimate interests in the domain name were immediately transferred to him.
Additionally, Respondent considers a chance that Complainant deliberately let the domain expire, possibly due to a lack of success and that after seeing the listed price of $38,395, Complainant have decided to file this recovery attempt.
C. Additional Submissions
Complainant rebuts Respondent's allegations, stating that their business still exists despite their website being taken down due to registration issues. Complainant disagree that is rights and interests in the domain were lost through the auction and argue that Respondent registered the domain in bad faith. Complainant explains that they contacted the registrar concerning the issue before Respondent listed the domain for resale and that their efforts to resolve the situation were ignored.
Complainant acknowledges that the Respondent may have conducted legitimate business with other companies, but insists that their actions in this particular case violate Complainant’s trademarks and lack legitimate interest. While Respondent claims to have returned domain names to original owners in the past, they did not respond positively to Complainant’s attempts to resolve the issue and instead listed the domain for auction at a significantly higher price.
Complainant argues that during 20 years his domain name was registered with Network Solutions and periodically auto-renewed without issues. In October 2022, Complainant received an email informing that his products would auto-renew soon. For Complainant, Network Solutions failed to auto-renew the domain, leading to the current situation, and did not inform Complainant about the domain being auctioned or transferred.
NewFold Digital, which owns Network Solutions and several other domain registration entities, auctioned off the Disputed Domain Name via SnapNames.com subsidiary for $2,499. Respondent is now attempting to resell it for $38,395. In November, Complainant sought assistance from Amit Kumar, Chief Customer Officer at NewFold Digital, who agreed to contact the buyer on Complainant behalf to cancel the auction or explore other ways to return the domain, potentially at the purchase price. NewFold Digital did not receive a response from Respondent.
Complainant is a consulting firm established in 1995, has been using Site Analytics name and the URL <siteanalytics.com> for over 20 years to support its clients and business operations. The company focuses on real estate analytics, statistical analyses, and plans to expand into website analytics. As president of Site Analytics, Mr Adam Epstein has written or been cited in various articles, spoken at industry events, assisted numerous blue-chip and Fortune 500 clients, and even chaired a large annual convention. Furthermore, Complainant domain name has played a crucial role in the company's success and has positively impacted many clients throughout the years.
Respondent is Digital Address/THIS DIGITAL ADRESS MAY BE FOR SALE, and is in the business of buying and selling domain names.
The Disputed Domain Name was registered on October 12, 2022, by Respondent. The Disputed Domain Name is offered to sell for $38,395.
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 has established common law rights in the SITE ANALYTICS trademark through its continuous and extensive use in offering analytics services.
Complainant's evidence demonstrates that the trademark has gained secondary meaning. According to Policy ¶ 4(a)(i), a complainant doesn't need to own a registered trademark before a respondent's registration if they can prove established common law rights in the trademark.
The Disputed Domain Name duplicates Complainant’s trademarks in their entirely and is therefore likely to cause confusion with the SITE ANALYTICS trademark.
Furthermore, the gTLD “.com” only responds to a material requirement to register a domain name and is usually disregarded in order to assess confusing similarity between a domain name and a trademark.
Respondent’s argument that Complainants hasn’t demonstrated their rights in the SITE ANALYTICS trademark is irrelevant.
The first element of the Policy is satisfied if a domain name is identical to a registered trademark, regardless of the likelihood of confusion under Policy ¶ 4(a)(i). (See for instance Snap Inc. v. Soloman Korban, Claim Number: FA2211002020962, Forum, December 22, 2022).
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant's SITE ANALYTICS trademark under Policy ¶ 4(a)(i).
Complainant highlights the fact that Respondent was not authorized to register and use the Disputed Domain Name and that there is no relationship between Complainant and Respondent.
Complainant has made a prima facie case in support of its allegations, which shifts the responsibility to Respondent to demonstrate that it has rights or legitimate interests in the Disputed Domain Name.
Respondent claims that it is in the business of buying and selling domain names and that it purchased the Disputed Domain Name through the marketplace after Complainant failed to renew its registration. While this may provide a legitimate interest in some cases, the Panel finds that Respondent has not provided sufficient evidence to establish a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Disputed Domain Name.
Furthermore, Respondent is not commonly known by the Disputed Domain Name.
Thus, the Panel deems that Respondent has failed to demonstrate rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Under the third requirement of the Policy, Complainant must establish that the Domain Name has been both registered and used in bad faith by Respondent.
To establish that the Domain Name has been registered in bad faith, Complainant must show that Respondent was aware or should have been aware of Complainant and the trademark.
Complainant is not well-know, so it’s entirely possible that the Respondent doesn’t know the SITE ANALYTICS trademark. However, Respondent might have discovered said trademark if it had conducted a trademark or other search before registering the Disputed Domain Name. The Panel is of the opinion that it was Respondent duty to search proactively in order to avoid infringing third party rights.
Respondent did not respond positively to Complainant's attempts to resolve the issue or to NewFold Digital's efforts to explore a resolution. Additionally, Respondent registered the Disputed Domain Name and offered to sell it at a significantly higher price than the auction purchase price through the Disputed Domain Name’s webpage who actually displayed an offer to sell the domain for $38.395. This may indicate an intention to profit from Complainant’s trademark (see Campmor, Inc. v. GearPro.com, FA 197972). The Panel notes that the specific offer for sale of the domain name and the lack of response constitutes evidence of bad faith registration and use under Policy ¶ 4(b)(i).
Moreover, the Panel finds that Respondent's registration of the Disputed Domain Name, which is confusingly similar to Complainant's trademark, is likely to create confusion amongst Internet users as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name or of a product or service on Respondent's website.
In light of these factors, the Panel finds that the Disputed Domain Name has been 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 <siteanalytics.com> domain name be TRANSFERRED from Respondent to Complainant.
Mrs. Nathalie Dreyfus, Panelist
Dated: March 31, 2023
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