TechSmith Corporation v. Senad Dizdar
Claim Number: FA1906001848574
Complainant is TechSmith Corporation (“Complainant”), represented by James R. Duby of Duby Law Firm, Michigan, USA. Respondent is Senad Dizdar (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <screencast-recording.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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 18, 2019; the Forum received payment on June 18, 2019.
On June 19, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <screencast-recording.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 June 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@screencast-recording.com. Also on June 20, 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 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 owns and operates a technology business that sells its goods and services in connection with the SCREENCAST.COM and SCREENCAST marks. Complainant has rights in the SCREENCAST.COM (e.g., Reg. No. 3,510,618, registered Oct. 7, 2008) and SCREENCAST (e.g., Reg. No. 5,595,914, registered Oct. 30, 2018) marks through trademark registrations with the United States Patent and Trademark Office (“USPTO”). See Compl. Annex A. Respondent’s <screencast-recording.com> domain name is identical and/or confusingly similar to Complainant’s SCREENCAST.COM mark as it incorporates the mark in its entirety and is differentiated only by the addition of the generic term “recording.” In addition, Respondent’s <screencast-recording.com> domain name is identical and/or confusingly similar to Complainant’s SCREENCAST mark as it incorporates the mark in its entirety and is differentiated only by the addition of the generic term “recording” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <screencast-recording.com> domain name. Respondent is not authorized or licensed to use Complainant’s SCREENCAST.COM and SCREENCAST marks and is not commonly known by the disputed domain name. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass itself off as Complainant and offer for sale competing services.
Respondent registered and uses the <screencast-recording.com> domain name in bad faith. Respondent passes off as Complainant in order to offer for sale competing services. Respondent had and does have actual notice of Complainant’s rights in the SCREENCAST.COM and SCREENCAST marks prior to registering using the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on December 2, 2018.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the dispute domain name.
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 Panel finds that the disputed domain name, <screencast-recording.com>, is confusingly similar to Complainant’s valid and subsisting trademark, SCREENCAST. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely adding the generic word “recording” and the g TLD “.com” to Complainant’s very trademark. This is in adequate to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the dispute domain name is confusingly similar to Complainant’s trademark.
Further, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the dispute domain name. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent apparently uses the disputed domain name to pass itself off as Complainant and offer for sale competing services.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Specifically, Respondent apparently uses the disputed domain name to pass itself off as Complainant and to offer for sale competing services. Using a disputed domain name to pass off as a complainant to offer for sale competing services can support a finding of bad faith per Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Here, Complainant provides screenshots of the disputed domain name’s resolving webpage which features Complainant’s marks and offers for sale “Screencast Recording” services and other related services. See Compl. Annex C. The Panel finds that Respondent engaged in bad faith use and registration of the disputed domain name.
Finally, given Respondent’s unauthorized use of Complainant’s SCREENCAST.COM and SCREENCAST marks and that it displays services that directly compete with Complainant, it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant's rights in the mark. The Panel, therefore, finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
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-recording.com> domain name be TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: July 15, 2019
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