Sin Spirits LLC v. H. Peters
Claim Number: FA1405001561750
Complainant is Sin Spirits LLC (“Complainant”), represented by George M. Dipp, Texas, USA. Respondent is H. Peters (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sinvodka.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2014; the National Arbitration Forum received payment on May 28, 2014.
On May 29, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <sinvodka.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 May 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2014 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 firstname.lastname@example.org. Also on May 30, 2014, 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 June 17, 2014.
On June 23, 2014, Complainant made an Additional Submission responding to Respondent’s allegations. The Panel finds that, although the submission was received in a timely manner under the provisions of Supplemental Rule 7, the required fees were received after the deadline for submissions. Thus, the Panel does not find this Submission to be in compliance with Supplemental Rule 7 which clearly requires that each additional submission, in addition to being timely received, has to be accompanied by an additional submission fee. Therefore, the Panel does not accept it for consideration along with the other materials of the case.
On June 29, 2014, Respondent filed his Additional Submission which are timely and thus accepted under Forum’s Supplemental Rule 7.
On June 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Antonina Pakharenko-Anderson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Identical and/or confusingly similar
Complainant states that he has a pending trademark application with the United States Patent and Trademark Office (“USPTO”) (Serial No. 86280743 filed May 14, 2014) for the SIN VODKA mark.
The <sinvodka.com> domain name is identical to Complainant’s SIN VODKA mark.
Rights and legitimate interests
According to Complainant, Respondent does not have any rights or legitimate interests in the <sinvodka.com> domain name for the following reasons:
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its SIN VODKA mark in any way.
b. The <sinvodka.com> domain name was made available for purchase through <domainnamessales.com> as of May 12, 2014 and on Sedo. Complainant attempted to purchase the disputed domain name, and Respondent’s offer was $10,000. After several counter offers, Respondent stated a minimum sale price of $6,900. See Complainant’s Exhibits 3 and 5.
c. The <sinvodka.com> domain name resolves to the website for “Moras Fine Wines Vodka Club,” and the owner of this website confirmed that he did not give Respondent permission to resolve the disputed domain name to his website. See Complainant’s Exhibits 4 and 7.
Registration and use in bad faith
Respondent registered and is using the <sinvodka.com> domain name in bad faith.
In support of this allegation, Complainant argues that:
a. Respondent registered the disputed domain name with the intention of selling it for above out-of-pocket costs incurred in registration and maintenance of the disputed domain name. See Complainant’s Exhibits 3 and 5.
b. Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s SIN VODKA mark. The <sinvodka.com> domain name redirects Internet users to a competing commercial website. See Complainant’s Exhibit 7.
Identical and/or confusingly similar
Respondent states that the <sinvodka.com> domain name consists of two generic terms.
Respondent’s registration of the disputed domain name predates Complainant’s trademark application. Further, Complainant has not adequately demonstrated common law rights in the SIN VODKA mark that would predate Respondent’s registration date of November 9, 2007.
Rights and legitimate interests
Respondent registered the <sinvodka.com> domain name with the intention of selling spirits from Haiti in the United States, but after the earthquake in Haiti in 2010, Respondent’s business partner based in the country was unable to assist in carrying out the business venture.
Respondent was approved as an affiliate for Mora’s Fine Wine & Spirits through Sharesale, but the disputed domain name currently resolves to a page with links to non-profit groups in an effort to help those battling alcoholism. See Respondent’s Exhibit 12.
Registration and use in bad faith
Respondent registered the <sinvodka.com> domain name in good faith prior to Complainant filing its trademark application. Respondent was never aware of Complainant’s existence, and Complainant was not in existence at the time Respondent registered the disputed domain name.
C. Additional Submissions
As earlier mentioned, the Panel decides not to accept Additional Submissions of Complainant as such that are not in compliance with the Forum’s Supplemental Rule 7.
Respondent’s Additional Submissions
In his Additional Submissions, Respondent emphasizes on the failure by Complainant to demonstrate ownership of a trade or service mark right.
He further states that Complainant has no common law rights in the “SIN VODKA” trademark.
The mere filing of a US trademark application does not confer a trademark right.
Complainant’s continued pursuit is reverse domain hi-jacking.
Complainant’s Other Correspondence
Complainant has provided a copy of a settlement letter sent by its attorney to Respondent in respect of civil litigation in the State of Arizona, offering to settle with Respondent for $4,000.
The Panel notes that there is no mention of concurrent legal proceedings in either the Complaint or Response. Therefore, this issue is not addressed in the analysis.
Respondent registered the disputed domain name on November 9, 1997 as evidenced by the Whois records.
Complainant makes four attempts to negotiate a purchase of the disputed domain name at Domainsales and Sedo.com on May 6, May 10, May 12 and May 27, 2014, but does not agree to the price offer and thus fails to negotiate the sale of the domain of interest.
On May 8, 2014 Complainant registered the legal entity Sin Spirits LLC with the Texas Secretary of State.
On May 14, 2014, namely more than 6 years after the registration of the disputed domain name by Respondent and shortly after the negotiations for sales of the disputed domain name broke off, Complainant filed a trademark application (Serial No. 86280743) to the USPTO seeking for registration of the “SIN SPIRITS” trademark in class 33, particularly for distilled spirits, spirits, spirits and liquors, vodka.
As follows from the USPTO records provided by the parties, the application was filed based on the intent to use. Thus, there was no prior use of the subject trademark by Complainant prior to the filing date.
The application is pending as follows from the status records. Respectively, the USPTO had not issued any decision in respect of registrability as of the date on which the present complaint was brought by Complainant.
The complaint was filed on May 28, 2014, which is 14 days following filing the mentioned trademark application with the USPTO and 20 days after the registration of Sin Spirits LLC, as well as following the four unsuccessful attempts to purchase the disputed domain.
The Panel has not found any evidences on the records of the present case, showing that Complainant might have been involved in prior use of the “SIN SPIRITS” trademark, or has any reputation associated with that mark, not only pre-dating the registration of the disputed domain name, but also pre-dating the actual filing of the trademark application with the USPTO.
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.
This is not only because the mere filing of a trademark application which has not been examined (namely no issuance took place) does not confer trademark rights under the Policy (See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003), and thus is not sufficient to establish rights in a trademark necessary to satisfy Policy 4 (a)(i), but also because no evidence could be submitted by Complainant showing that it might hold any common law rights based on prior use of the “SIN SPIRITS” trademark as the USPTO records clearly show that the application was filed based on an intent to use. Moreover, nowhere in his submission does Complainant allege that he has been using the mark or might have been known under this mark.
Thus, taking into account that registration of the disputed domain by Respondent, significantly pre-dating the trademark filing by Complainant, cannot be treated as the registration in bad faith, and further research into the second element of the Policy also makes no sense as Complainant, having not established the first element of the Policy, has no ground to allege that Respondent has no rights or legitimate interests in the disputed domain, the Panel decides to decline further analysis of the other two elements of the Policy. See Creative Curb v. Edgetec Int'l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant's failure to prove one of the elements makes further enquiry into the remaining element unnecessary).
Reverse Domain Name Hijacking
Having found that
- the registration of the domain significantly pre-dates trademark filing by Complainant (which, as mentioned before, does not confer trademark rights to Complainant) and of which Complainant was well aware when he brought the present complaint, and
- the trademark filing was made, and the present complaint was filed following unsuccessful attempts to negotiate sales of the disputed domain,
The Panel has come to a conclusion that the complaint was filed in bad faith, abusing the Policy in order to acquire the domain name, and thus such activities of Complainant qualify for an attempt of reverse domain name hijacking in the meaning of Rule 1 of the UDRP Policy. See Edward Smith v. Douglas Bates, FA 1483682 (Nat. Arb. Forum March 27, 2013) (finding that the Complainant filed its trademark application shortly after it was unable to acquire the Disputed Domain Name from the Respondent on acceptable terms, and thus failing in this effort, the Complainant undertook to use the Policy to acquire the Disputed Domain Name).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sinvodka.com> domain name REMAIN WITH Respondent.
Antonina Pakharenko-Anderson, Panelist
Dated: July 18, 2014
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