APT Advanced Polymer Technology Corporation v. alex prieto / ALP Turf
Claim Number: FA2202001983488
Complainant is APT Advanced Polymer Technology Corporation (“Complainant”), represented by Carrie A. Shufflebarger of Thompson Hine LLP, Ohio, USA. Respondent is alex prieto / ALP Turf (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <synlawnssofla.com> and <synlawnmiami.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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2022; the Forum received payment on February 7, 2022.
On February 8, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <synlawnssofla.com> and <synlawnmiami.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 February 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 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@synlawnssofla.com, postmaster@synlawnmiami.com. Also on February 14, 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 March 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceeding, Complainant has raised the issue of multiple respondents. The verification response from the registrar lists the registrant in the case of both of the domain names as clearly the same person, namely “alex prieto”, expressed in that way in each case. However, in the verification response for the <synlawnssofla.com> domain name, the registrant organization is given as ALP Turf, whereas the verification response for the <synlawnmiami.com> domain name leaves the registrant organization as a blank.
Complainant submits that the entities which control the two domain names are effectively controlled by the same person and/or entity, namely Alex Prieto who is operating under an alias or aliases and that the two domain names are therefore in reality registered by the same domain name holder within the meaning of Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy which provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
In support of this submission, Complainant has adduced evidence that the creation date and time of each domain name is the same, the individual registrant is the same, namely Alex Prieto, the registrant, city, state and telephone number are the same, the registrant is in each case in Miami, Florida and each domain name resolves to the same website, namely www. alpturf.com. Complainant has therefore made out a strong case, supported by detailed evidence, that the two domain names are controlled by one entity.
On the evidence and in the light of all of the circumstances, the Panel therefore finds that the domain names are commonly owned/controlled by a single Respondent who is using an alias or aliases and that they are therefore registered by the same domain name holder.
The proceeding was therefore validly filed and may go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant manufactures and sells synthetic turf and related recreation surface coatings and specialty products. Complainant has rights in the SYNLAWN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,056,131, registered Jan. 31, 2006) (“the SYNLAWN mark”). See Amend. Compl. Ex. H. Respondent’s <synlawnssofla.com> and <synlawnmiami.com> domain names are confusingly similar to Complainant’s SYNLAWN mark. Respondent incorporates the mark in its entirety adding either the term “miami” or “sofla” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <synlawnssofla.com> and <synlawnmiami.com> domain names as Respondent is not commonly known by the disputed domain names nor did Complainant authorize Respondent to use the SYNLAWN mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain names resolve to a webpage that offers products and services that compete with Complainant’s business.
Respondent registered and used the <synlawnssofla.com> and <synlawnmiami.com> domain names in bad faith as Respondent’s domain name resolve to webpage that offer competing goods and services to Complainant’s business with the intention of confusing internet users into thinking Respondent is somehow affiliated with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that manufactures and sells synthetic turf and related recreation surface coatings and specialty products.
2. Complainant has established its trademark rights in the SYNLAWN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,056,131, registered Jan. 31, 2006).
3. Respondent registered the <synlawnssofla.com> and <synlawnmiami.com> domain names on November 14, 2018.
4. The domain names have resolved to a website at www.alpturf.com that offers identical products and services that compete with Complainant’s business.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims to have rights in the SYNLAWN mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with copies of its USPTO registrations for the SYNLAWN mark (e.g. Reg. No. 3,056,131, registered Jan. 31, 2006). See Amend. Compl. Ex. H. Therefore, the Panel finds Complainant has established its rights in the SYNLAWN mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s SYNLAWN mark. Complainant argues that Respondent’s <synlawnssofla.com> and <synlawnmiami.com> domain names are confusingly similar to Complainant’s SYNLAWN mark. Registration of a domain name that contains a mark in its entirety and adds a gTLD along with generic terms does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)), see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”). Here, Complainant argues that Respondent incorporates the mark in its entirety adding either the word “miami” or the letter “s” and the term “sofla” along with the “.com” gTLD. The Panel agrees and finds that Respondent’s domain names are confusingly similar to Complainant’s SYNLAWN mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SYNLAWN trademark and added either the word “miami” or the letter “s” and the term“sofla” which do not negate the confusing similarity between the respective domain name and the trademark;
(b) Respondent registered the <synlawnssofla.com> and <synlawnmiami.com> domain names on November 14, 2018;
(c) Respondent has caused the domain names to resolve to the website at www.alpturf.com that offers products and services that are identical to those of Complainant and compete with Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interests in the <synlawnssofla.com> and <synlawnmiami.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been given license or consent to use the SYNLAWN mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrants of the domain names collectively as “alex prieto / ALP Turf” and there is no other evidence to suggest that Respondent was authorized to use the SYNLAWN mark or was commonly known by the disputed domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain names resolve to a website that offers products and services that compete with Complainant’s business. Use of a disputed domain name that makes use of a complainant’s mark and resolves to a webpage that offers services and products that compete with that mark is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant has provided the Panel with a screenshot of Respondent’s <synlawnssofla.com> and <synlawnmiami.com> domain names’ resolving website that offers goods and services identical to those of Complainant offered under Complainant’s SYNLAWN mark and business. See Amend Compl. Ex. 3. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <synlawnssofla.com> and <synlawnmiami.com> domain names in bad faith as they resolve to a website that offers competing goods and services to Complainant’s business in the hope of confusing internet users into thinking Respondent is somehow affiliated with Complainant. Use of a disputed domain name that makes use of a mark in order to confuse internet users and offers similar goods and services to those of the trademark owner may show that a respondent registered and used a disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (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 has provided the Panel with a screenshot of Respondent’s <synlawnssofla.com> and <synlawnmiami.com> domain names resolving webpage that offers goods and services related to Complainants’ SYNLAWN mark and business. See Amend Compl. Ex. 3. Therefore, the Panel agrees and finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the SYNLAWN mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <synlawnssofla.com> and <synlawnmiami.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: March 15, 2022
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