Landmark Screens, LLC v. Jay Scheibe / Ixzar, Inc.
Claim Number: FA1906001849356
Complainant is Landmark Screens, LLC (“Complainant”), represented by Mark A. Steiner of Duane Morris, LLP, California, USA. Respondent is Jay Scheibe / Ixzar, Inc. (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <siliconview.com> (“Domain Name”), registered with Tucows Domains Inc..
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.
Lynda M. Braun, Douglas M. Isenberg and Nicholas J.T. Smith (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on June 24, 2019; the Forum received payment on June 24, 2019.
On June 24, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <siliconview.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@siliconview.com. Also on June 26, 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.
A timely Response was received and determined to be complete on July 22, 2019.
On July 29, 2019, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Lynda M. Braun, Douglas M. Isenberg and Nicholas J.T. Smith as Panelists.
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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading innovator in digital out-of-home media, namely providing advertising services via digital billboards. Complainant has rights in the SILICONVIEW mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,667,827, registered Dec. 31, 2002). Respondent’s <siliconview.com> domain name is identical to Complainant’s mark.
Respondent has no rights or legitimate interests in the <siliconview.com> domain name. Respondent has never been authorized to use the SILICONVIEW mark nor has Respondent sought permission to use the mark. Respondent provided website administration services to Complainant and in that context registered and held the Domain Name, which has always been used by the Complainant for its website. Upon termination of the relationship between Respondent and Complainant on May 7, 2019, Respondent improperly removed Complainant’s access to the Domain Name. The Domain Name still hosts Complainant’s website but inquiries submitted through the website are no longer being delivered to Complainant. This conduct amounts to unlawful leveraging of the Domain Name in an attempt to extort nearly $500,000 from Complainant. Such conduct is not use of the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent registered and uses the <siliconview.com> domain name in bad faith. Despite Respondent being instructed to register and maintain the Domain Name on behalf of Complainant, Respondent registered the Domain Name in its own name. Respondent now demands nearly $500,000 in exchange for reinstating Complainant’s access to the Domain Name and in the meantime has maliciously redirected all consumer inquiries sent through the Domain Name away from Complainant. Such conduct amounts to use of the Domain Name in bad faith.
B. Respondent
Respondent has rights or legitimate interests in the <siliconview.com> domain name as Respondent is the original registrant and Respondent has been authorized to use the SILICONVIEW mark as part of the management and control of the Domain Name. Respondent has always been the exclusive owner of the Domain Name and Respondent has permitted Complainant to display their website on the resolving webpage. Complainant has never purchased the Domain Name from Respondent or sought transfer.
Respondent has not hijacked or otherwise changed the access codes to the Domain Name. Upon the termination of the business relationship between the parties, Complainant attempted to seize control of the Domain Name improperly. Complainant owes Respondent over $400,000 in unpaid services and intellectual property and now seeks to take from Respondent the Domain Name without any compensation.
Respondent registered the Domain Name on December 16, 1999 prior to the existence of the SILICONVIEW mark in anticipation of working with Complainant to develop products and intellectual property together. It was not acquired to sell or rent the Domain Name and because Respondent continues to use the Domain Name to point to Complainant’s website, no use in bad faith should be found.
Complainant holds trademark rights for the SILICONVIEW mark. The Domain Name is confusingly similar to Complainant’s SILICONVIEW mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <siliconview.com> domain name and that Respondent registered and uses the Domain Name in bad faith.
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 rights in the SILICONVIEW mark based upon registration with the USPTO (e.g. Reg. No. 2,667,827, registered Dec. 31, 2002). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.”).
Complainant contends that the Domain Name is identical to the SILICONVIEW mark as it merely adds the gTLD “.com” to Complainant’s fully incorporated mark. The Panel finds that the Domain Name is identical to the SILICONVIEW mark. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor is it authorized to use the SILICONVIEW mark. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Jay Scheibe / Ixzar, Inc.” as registrant of record and the Respondent does not assert that it is commonly known by the Domain Name.
Rather what has occurred in the present case is the breakdown of a long-running commercial relationship between the parties. Respondent has, since 1999 provided web administration services for the Complainant. This included registering the Domain Name on behalf of Complainant and hosting Complainant’s official company website at the Domain Name.
The exact nature of the relationship between the parties is unclear (no written contract being in existence) but in essence the relationship has broken down. On April 29, 2019, Respondent wrote to Complainant, demanding payment of $489,750 for services provided and indicating that if no such payment was provided by May 6, 2019, Respondent would be terminating domain name administration services for various domain names including the Domain Name. No such payment was received and on May 6, Respondent wrote to Complainant, indicating that it was terminating its relationship including ceasing to provide its services including mail exchanger record registration services.
Since May 6, 2019, Respondent has continued to hold the Domain Name and Complainant’s website has remained active at the Domain Name. However, Respondent has not passed on any sales enquires received through the Complainant’s website to Complainant. Complainant characterizes Respondent’s conduct as hijacking to extort payment of nearly $500,000 that it is not entitled to.
The Panel takes no position as to whether Respondent is entitled to $489,750 it seeks from Complainant; such an issue being outside the scope of the UDRP, however the present circumstances do not provide Respondent with rights or legitimate interests in the Domain Name. Absent any evidence of an agreement that allowed Respondent to maintain possession over the Domain Name in order to secure payment, Respondent’s use of the Domain Name, essentially as commercial leverage to seek payment of $489,750 it claims to be owed, does not amount to a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel notes Respondent’s arguments that Respondent has rights or legitimate interest because it is not infringing Complainant’s SILICONVIEW Mark. The Panel reaches no conclusion as to whether or not Respondent’s use infringes the SILICONVIEW Mark, however the mere absence of trade mark infringement does not provide a party with rights or legitimate interests in a domain name under the Policy. Furthermore the fact that Respondent may have been authorized to register and use the Domain Name by the Complainant as part of its role providing web administration services does not assist it in the present case; to the extent Respondent was authorized by Complainant in any way, such authorization ceased when Respondent ceased to provide services to Complainant, on May 6, 2019.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel notes that Respondent’s registration of the Domain Name (registered on December 16, 1999) predates Complainant’s first claimed rights in the SILICONVIEW mark (registered on December 31, 2002 with first use in October 2000). When the registration of a disputed domain name predates Complainant’s trademark rights, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. 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.”). However, as noted at section 3.8.2 of the WIPO Overview 3.0, “in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.”
The present case falls into a category of cases where the Domain Name was registered by an individual or entity on behalf of a complainant. It is undisputed that Respondent registered the Domain Name on December 16, 1999 in awareness of Complainant and the likelihood of it developing trademark rights in the SILICONVIEW Mark, indeed it was instructed to do so by Complainant. The question is whether such a registration was in bad faith.
Under the Policy, registration in bad faith occurs when a respondent was instructed to register a domain name on behalf of a complainant but then chooses to register that domain name in its own name. See Sanford Winery Company v. Matt Geiser, WIPO Case No. D2008-0210: (“Respondent was acting as Complainant’s agent in the registration of the domain name at issue and was to have registered the domain name in Complainant’s name. Respondent in fact registered the domain name at issue in his own name and has refused numerous requests to transfer the domain name to Complainant. This has long been held to be registration in bad faith…”); GMI Sound Corporation v. Fitzpatrick Brothers Studios, WIPO Case No. D2005-0204: (“Complainant asserts without contradiction that Respondent was hired to register the disputed domain name on Complainant’s behalf, but kept the registration for itself. Thus, bad faith registration is established. The improper holding of a domain name one was hired by another to register would also be sufficient to establish bad faith use.”)
The Panel finds that Respondent was engaged by Complainant in 1999 to provide web administration services, including registering the Domain Name on behalf of Complainant. Respondent’s suggestion that its registration was a “matter of protecting its interests in its intellectual property” is unsupported by any evidence and implausible in light of the subsequent conduct of the parties, where Respondent simply managed Complainant’s websites and invoiced Complainant for the operation of the website and renewal of the Domain Name. While neither party provided any evidence of a written agreement, the Panel finds, on the balance of probabilities, that in circumstances where the Domain Name was registered on behalf of the Complainant, by a third party entity with no actual or prospective rights to the Domain Name and all costs relating to that Domain Name registration were paid by the Complainant, that the parties intended that the Domain Name be registered in the name of the Complainant. See Management Consulting Services, Inc. v. Alternative (DNZVLZZPLD), WIPO Case No. D2005-0233: (“The evidence in the form of the reimbursement check clearly indicates that the domain name was registered on behalf of Complainant.”)
Rather than registering the Domain Name on behalf of Complainant, in Complainant’s name, Respondent registered (and subsequently renewed) the Domain Name in its own name, enabling it to maintain possession of the Domain Name and seek consideration for its transfer when the relationship between the parties broke down. Respondent’s actions mirror those of the respondent in Athena Infonomics India Private Limited v. Registration Private, Domains By Proxy, LLC / Renji Mathew, WIPO Case No. D2017-1779 and amount to registration of the Domain Name in bad faith. In that case the Panel found that the then complainant engaged [then respondent’s company] to register and maintain a domain name on the complainant's behalf, and to provide related hosting services and that the respondent later refused to transfer that domain name without compensation even though complainant had paid [then respondent’s company] for the registration expenses. The Panel in that case found that: “Respondent was supposed to have registered the Disputed Domain Name for the benefit of Complainant; instead, without authorization, he registered the Disputed Domain Name in his own name and has held the Disputed Domain Name hostage. Although Respondent claims that he is only trying to recoup money that Respondent claims is owed to him by OrangeLab, this alleged dispute does not justify the bad faith conduct towards Complainant. Respondent's admitted conduct supports a strong inference that Respondent registered the Disputed Domain Name in his own name in order to control the ultimate disposition of the Disputed Domain Name. Furthermore, Respondent has conceded that his plan is to hold the Disputed Domain Name hostage, which is further evidence of abusive cybersquatting.”
The Panel finds that Respondent’s present use of the Domain Name is in bad faith. Respondent presently seeks payment of $489,750 from Complainant relating to an alleged debt. Rather than resolve this dispute through normal legal processes, Respondent is taking advantage of its prior role providing web administration services to Complainant by holding the Domain Name and preventing consumer enquiries sent through Complainant’s website from reaching Complainant. The Panel finds that Respondent’s actions amount to use of the Domain Name in bad faith per Policy ¶ 4(b)(i) since in exchange for transfer of the Domain Name Respondent seeks valuable consideration (being payment of $489,750), well in excess of Respondent’s documented out of pocket costs relating to the Domain Name (which in any event were paid by Complainant upon invoice by Respondent).
The Panel finds Complainant has satisfied 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 <siliconview.com> domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Douglas M. Isenberg, Panelist
Nicholas J.T. Smith, Chair
Dated: August 6, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page