Skullcandy, Inc. v. shane kofoed
Claim Number: FA1208001458062
Complainant is Skullcandy, Inc. (“Complainant”), represented by R. Parrish Freeman of Workman Nydegger, Utah, USA. Respondent is shane kofoed (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skullcandysucks.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2012; the National Arbitration Forum received payment on August 14, 2012.
On August 16, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <skullcandysucks.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 August 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2012 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@skullcandysucks.com. Also on August 20, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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. The Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules, plus rules and principles of law that the Panel deemed applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in the term SKULLCANDY and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant has since 2003 used the trademark SKULLCANDY in connection with the sale of audio equipment and accessories.
2. Complainant owns, inter alia, United States Trademark Reg. No. 3,168,695 registered November 7, 2006 for SKULLCANDY.
3. The disputed domain name was registered on June 22, 2011.
4. The domain name is parked at a website featuring hyperlinks to goods and services unconnected with Complainant’s business.
5. The domain name is for sale.
6. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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
(1) 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory (see Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) for the same proposition).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Panel is also satisfied that the disputed domain name is confusingly similar to Complainant’s trademark. The disputed domain name takes the whole trademark and simply adds the non-distinctive gTLD, “.com” plus the term “sucks”. Former UDRP panels have collectively agreed that the inclusion of these terms do not avoid an adverse finding under this aspect of the Policy (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also, Red Bull GmbH v. Carl Gamel, D2008‑0253 (WIPO April 18, 2008), considering in detail the significance to be given to the word “sucks” in relation to paragraph 4(a)(i)).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
The publicly available WHOIS information identifies Respondent as “shane kofoed” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark SKULLCANDY and Complainant denies any such authorization.
There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant provides evidence that the domain name resolves to a parked page displaying the message: “Want to buy this domain?” along with miscellaneous commercial offers connected with domain name use and registration but unconnected with Complainant’s business or trademark.
Whether or not that is a serious offer of sale of the domain name, it points away from a serious or legitimate interest in the name.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
In the absence of a Response, that onus is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Panel finds evidence of both. The very nature of the domain name shows Respondent’s knowledge of the trademark at the time it registered the domain name. Panel finds that Respondent targeted Complainant’s trademark and merely added the pejorative term “sucks”. Respondent has no rights in the domain name, nor has Respondent shown itself to have any legitimate interest in the domain name (by way of a criticism or other website associated with the domain name). Panel finds registration in bad faith.
Panel finds that Respondent’s actions also show use in bad faith. Respondent has not acted in any way that might support a fair use argument. Instead, the domain name is parked and Respondent offering the disputed domain name for sale through the resolving parked website. Because of its additional miscellaneous commercial advertisements such website is more likely than not to also generate click through fees which benefit Respondent. Panel finds use of the domain name in bad faith (see, for example, Gen. Elec. Co. v. FORDDIRECT.COM, INC., D2000-0394 (WIPO June 22, 2000) finding that the respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale; see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) finding that a failure to use the domain name in any context other than to offer it for sale amounts to a use of the domain name in bad faith).
In the result, Panel finds that Complainant has established the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skullcandysucks.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: September 29, 2012
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