Sensient Technologies Corporation v. Sumer Kolcak
Claim Number: FA1010001355265
Complainant is Sensient Technologies Corporation ("Complainant"), represented by Melissa H. Burkland of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Sumer Kolcak ("Respondent"), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sensient.co>, registered with Tucows, Inc.
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.
Mr. Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 27, 2010; the National Arbitration Forum received payment on October 29, 2010.
On October 28, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <sensient.co> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 October 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2010 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@sensient.co. Also on October 29, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 November 2, 2010.
Complainant submitted an Additional Submission that was received and determined to be compliant on November 8, 2010.
On November 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Petter Rindforth as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant states to be a global company with operations in more than 30 countries, and claims to be the world's leading supplier of flavors, fragrances and colors used to make a diverse variety of foods and beverages, pharmaceuticals, cosmetics, home and personal care products, specialty printing and imaging products, computer imaging and industrial colors. The Complainant uses its SENSIENT marks in connection with its business, since at least January 23, 2001. The Complainant states that SENSIENT is a coined and fanciful term that does not appear in the dictionary.
Apart from the registered trademarks, the Complainant also refers to the fact that it holds the domain name <sensient.com> for a website that provides information about the Complainant and its goods and services, as well as a number of other domain name registrations (such as <sensient.info>, <sensient.name>, <sensient.net>, <sensient.org>, <sensient.us>, and several others), all redirected to the main <sensient.com> and <sensient-tech.com> websites of the Complainant (Exhibit E of the Complaint).
According to the Complainant, the Respondent appears to be in the business of buying and selling domain names. The Complainant argues that the Respondent’s web page does not offer any gods or services, but rather contains information about how the disputed domain name and other domains are for sales. The Complainant concludes that the Respondent is engaged in the business of registering domain names that incorporate others' trademarks and then requesting thousands or even millions of dollars for the domain names. For example, Respondent rejected the $100.00 offer that Oceaneering International, Inc. offered for the domain name <oceaneering.co> and requested $337,000.00. Id. Oceaneering International, Inc. owns multiple U.S. registrations for the OCEANEERING mark. Similarly, the Respondent claims to own <yahoos.co>, which - according to the Complainant - is highly similar to the YAHOO trademark, and is requesting $17 million for this domain (Exhibits F and E of the Complaint).
The Complainant argues that the Respondent’s domain name is identical and confusingly similar to the Complainant’s trademarks, as the disputed domain name incorporates the SENSIENT trademark in its entirety. According to the Complainant, Internet users seeking Complainant's goods and services are likely to stumble upon the disputed domain name when looking for Complainant's website and will mistakenly expect that <sensient.co> is associated with, sponsored by or otherwise approved by the Complainant.
The Complainant also states that the Respondent does not have any rights or legitimate interests in the disputed domain name, as (a) the Respondent does not use, or undertake demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services, (b) the Respondent is not commonly known by the domain name, and (c) the Respondent is not making a legitimate non commercial or fair use of the domain name. Rather than offering goods and services, the Respondent's domain name states that "The domain name you've entered is for sale." The domain name further advertises that other sites, specifically, "<oceanneering.co>" and "<yahoos.co>" are also for sale for $337,000 and $1.7 million, respectively. The Complainant concludes that advertising the domain name itself as for sale on the website for the domain is not a bona fide offering of goods or services.
Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent had constructive knowledge of the Complainant's rights in the SENSIENT trademarks, and that the Complainant’s trademark rights pre-exist the Respondent's domain name registration. According to the Complainant, SENSIENT is a fanciful term that does not appear in the dictionary and the likelihood of infringing the rights of a third party or creating a likelihood of confusion as to source is clearly greater when the domain name is not a dictionary word or descriptive phrase. See Media General Communications, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO Sept. 23, 2006).
As a further bad faith argument, the Complainant points out that Respondent’s domain name incorporates the Complainant's trademark in its entirety, and that the Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the name (Respondent's domain page expressly states "The domain name you've entered is for sale", Exhibit E of the Complaint).
B. Respondent
The Respondent argues that the Complaint is not subject to the UDRP, as “sensient” - according to the Respondent - exists in many companies world wide. The Respondent states that every word in the English language is trademarked already.
According to the Respondent, is it common that attorneys are being put to work to “steal/hijack” domain names, and when the Respondent receives their short warning letters, Respondent usually respond with “go screw yourself” or something equivalent.
The Respondent states that .co is a special new brand.
Regarding the word “sensient”, the Respondent states that the term “sensi” is not a trademark and the term “ent” means “entertainment”, concluding that “sensi ent” simply means “sensi entertainment”. Because domain names do not permit spacing, the Respondent had no choice but to register the two words as one.
The Respondent concludes that using the UDRP or trademark laws to “steal” the domain name would be a case of intellectual property theft by any company involvement. The Respondent further states that if the Complainant really wants the disputed domain name, Complainant would have to purchase it from the Respondent, using traditional business methods. The Respondent would only sell the Complainant the disputed domain name if Complainant uses proper techniques to do business with the Respondent, “just like in a real life scenario”.
The Respondent expects an apology letter from the Complainant, and informs that <sensient.co> has many other potential buyers. The Respondent claims to be in the process of “trade marking” and registering the names Sensi Entertainment Inc; Sensi Ent Inc; Sensi Ent, etc., stating that the documentation proving this are made official in the coming weeks.
According to the Respondent, the best way for the Complainant to purchase the disputed domain name would be to make a reasonable offer quickly. The said offer should reflect the fact that .co is a more global concept than .com, and the Respondent state to be willing to transfer as long as it is a “fair valuable price on the table”.
C. Additional Submissions
Complainant
Complainant’s Additional Submission points out the fact that the Respondent in its Response make repeated offers to sell the disputed <sensient.co> domain name, and concludes that these offers confirm that the Respondent registered the domain name solely for the purpose of selling it. The Complainant states that, on the day the dispute was filed, the Respondent contacted Complainant’s counsel and offered to sell <sensient.co> for $13,000 (Exhibit E of the Additional Submission).
The Respondent has also threatened both the Complainant and its counsel in response to the Complaint, and these acts confirm Respondent’s bad faith and failure to use the domain name in connection with a bona fide offering of goods or services. Specifically, on October 29, 2010, two day after the filing of the Complaint, the Respondent posted the following message on <sensient.co> website (Exhibit 2 of the Additional Submission):
“IF YOU STEAL MY DOMAIN NAMES USING TRADEMAKRS OR UDRP’s or ugly fat ATTORNEYS, YOU WILL ALL BE TRACKED DOWN AND MURDERED LEGALLY, LEGALLY MEANS NO EVIDENCE. ARE YOU IN? I’ve murdered many people around the world, police just can’t make an arrest due to a lack of “evidence” . . . if you like death, i care not if you are ceo or attorney or a registrar president. i’ll give you what you like. DEATH.”
The Complainant argues that the Respondent’s threats to “murder” individuals that engage in the lawful UDRP process to resolve domain name disputes cannot constitute a bona fide use of the domain name and further establishes the Respondent’s bad faith registration of <sensient.co>. Respondent’s explanation that the Respondent intends to start a company called “Sensi Entertainment” is unbelievable, and Respondent offers no evidence to support his self-serving contentions.
The Panel finds that the Complainant has established trademark rights in the SENSIENT trademark, represented by:
U.S. No 3,021,274 SENSIENT TECHNOLOGIES (word),
registered November 29, 2005
U.S. No 2,926,498 SENSIENT & Device, registered February 15, 2005
U.S. No 2,923,580 SENSIENT & Device, registered February 1, 2005
U.S. No 2,923,579 SENSIENT & Device, registered February 1, 2005
U.S. No 2,931,068 SENSIENT & Device, registered March 8, 2005
U.S. No 2,921,015 SENSIENT & Device, registered January 25, 2005
U.S. No 2,976,513 SENSIENT (word), registered July 26, 2005
U.S. No 3,021,265 SENSIENT TECHNOLOGIES (word), registered November 29, 2005
U.S. No 3,021,254 SENSIENT TECHNOLOGIES (word), registered November 29, 2005
U.S. No 3,021,253 SENSIENT TECHNOLOGIES (word), registered November 29, 2005
U.S. No 3,021,252 SENSIENT TECHNOLOGIES (word), registered November 29, 2005
U.S. No 3,004,631 SENSIENT TECHNOLOGIES (word), registered April 10, 2005
U.S. No 2,948,282 SENSIENT (word), registered October 5, 2005
U.S. No 2,967,358 SENSIENT (word), registered December 7, 2005
U.S. No 2,970,917 SENSIENT (word), registered July 19, 2005
U.S. No 2,970,916 SENSIENT (word), registered July 19, 2005
all of which are used in connection with ingredients, flavours, additives, colours and fragrances used to manufacture food, cosmetics and other consumer products, as well as services related thereto, the registrations covering Intl. Classes 1, 2, 3, 5, 29, 30, 32 and 42 (Exhibit C of the Complaint). Some of the registrations originally registered in the name of Universal Foods Corporation and thereafter transferred to the Complainant.
Respondent registered the disputed domain name <sensient.co> on August 23, 2010 (as shown in Exhibit B of the Complaint).
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.
As stated above under “FINDINGS”, the Complainant has shown a trademark rights in the SENSIENT word by virtue of its multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”).
Such extensive trademark registration with the USPTO serves as conclusive evidence of Complainant’s rights in the SENSIENT mark for the purposes of Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
The Complainant alleges that the Respondent’s <sensient.co> domain name is identical and confusingly similar to Complainant’s SENSIENT mark. The Panel finds that the only difference between the Complainant’s trademark and the Respondent’s disputed domain name is the addition of the country code top-level domain (“ccTLD”) “.co,” which stands for “Colombia,” but also has the potential to be a misspelling of the more common generic top-level domain (“gTLD”) “.com.” The Panel finds that attaching the ccTLD “.co” does nothing to prevent the <sensient.co> domain name from being identical to Complainant’s SENSIENT mark. See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”). Seealso L.A. Fitness International, LLC v. Isaac Goldstein, DCO2010-0007 (WIPO Sept. 15, 2010) (finding a respondent's domain name to be confusingly similar where the ".co" suffix could be mistakenly typed where a consumer meant to type ".com").
Accordingly, the Panel finds that the disputed domain name is identical to Complainant’s SENSIENT mark according to Policy ¶ 4(a)(i),
The Panel also finds that the disputed domain is confusingly similar to the Complainant’s registered trademark SENSIENT TECHNOLOGIES, as the domain name consists of the first, as well distinctive, part of the mark SENSIENT TECHNOLOGIES.
The Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name establishes a prima facie case under the Policy. Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant contends that Respondent is not commonly known by the <sensient.co> domain name. The WHOIS information for the disputed domain name lists the registrant as “Sumer Kolcak,” a name which the Panel may find has no relation to the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the <sensient.co> domain name and lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Complainant argues that the disputed domain name resolves to a website indicating that <sensient.co> is for sale and providing information about other domain names that are for sale or that have been the subject of previous UDRP complaints. The Panel finds that using the disputed domain name incorporating the Complainant’s mark to advertise that the disputed domain name, among other domain names, is for sale is clearly not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Respondent claims to be in the process of protecting trade marks and company names consisting of the words “Sensi” and “Sensi Ent”, stating that the documentation proving this will be made official in the coming weeks. However, the Respondent provides no evidence of any kinds regarding these alleged business plans, and especially nothing to prove that the Respondent had used “Sensi Ent” as a trademark or other business related name prior to registering the domain name. Considering the other information and arguments provided by the Respondent in this dispute, the Panel has no reason to believe that Respondent registered and have used the domain name for any other “business plan” than to offer it to the Complainant to buy.
The Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Complainant alleges that Respondent is in the business of buying and selling domain names. The Complainant argues that <sensient.co> resolves to a website offering no goods or services but only displaying information about how the disputed domain name and other domain names are for sale. The Complainant asserts that the Respondent appears to be registering domain names that incorporate other parties’ trademarks and then requesting thousands or even millions of dollars for their transfer.
The Panel agrees with these allegations, and finds that the Respondent registered the <sensient.co> domain name primarily for the purpose of selling, renting, or otherwise transferring the name, which is evidence of bad faith registration and use according to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Another legal presumption of bad faith arises when a respondent is aware, actually or constructively, of a complainant's famous and distinctive trademark. See Bloomberg L.P. v. C&C Multimedia, FA 0096659 (Nat. Arb. Forum April 4, 2001) (bad faith found where the complainant had federal trademark registration for BLOOMBERG prior to the respondent's registration of bloomsberg.com). Referring to the Complainant’s large number of U.S. trademark registrations, in combination with the number of domain names pointing to the Complainant’s main web sites with the trademark featured, and the fact that the Respondent is living in the U.S., clearly indicates that the Respondent must have been well aware of the Complainant’s prior trademark rights when registering the disputed domain name.
Respondent’s request for $13,000 for the <sensient.co> domain name far exceeds Respondents out-of-pocket expenses and confirms bad-faith registration. See Allee Willis v. NetHollywood, D2004-1030 (WIPO Feb. 17, 2004) (stating that offers to sell a domain name for amounts in excess of respondent’s out-of-pocket costs to register and maintain the domain name support a finding of bad faith).
Finally, the Respondents behaviour with severe threats against the Complainant, as well as the Complainant’s attorney and the “registrar president”, stating that the Respondent has “murdered many people around the world, police just can't make an arrest due to lack of "evidence"... if you like death, I care not if you are ceo or an attorney or a registrar president. I'll give you what you like. DEATH. yummy.. it will come in ways you never thought possible, it all looks very organic and natural…” is a remarkable bad faith behaviour, adding severely to the other abovementioned indications and evidences of Respondents bad faith registration and use.
Referring to all the above circumstances, the Panel concludes that Respondent has registered and used the domain name in bad faith. The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sensient.co> domain name be TRANSFERRED from the Respondent to the Complainant.
Mr. Petter Rindforth, Panelist
Dated: November 22, 2010
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