Hassan Shams v. Private Registration / WhoisGuardService.com
Claim Number: FA1611001703556
Complainant is Hassan Shams (“Complainant”), represented by Shawn Diedtrich of Prudens Law LLC, Arizona, United States. Respondent is Private Registration / WhoisGuardService.com (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <soccermall.com>, registered with Nanjing Imperiosus Technology Co. Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2016; the Forum received payment on November 17, 2016. The Complaint was submitted in both Chinese and English.
On November 18, 2016, Nanjing Imperiosus Technology Co. Ltd. confirmed by e-mail to the Forum that the <soccermall.com> domain name is registered with Nanjing Imperiosus Technology Co. Ltd. and that Respondent is the current registrant of the name. Nanjing Imperiosus Technology Co. Ltd. has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. Ltd. 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 November 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 2016 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 November 18, 2016, 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 December 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 name be transferred from Respondent to Complainant.
i) For over sixteen years, Complainant has used the SOCCER MALL mark in connection with retail and online store services, including selling soccer uniforms, footwear, socks, shinguards, jerseys, gloves, pants, shorts, knee protectors, t-shirts, sweatshirts, sweat pants, soccer balls, backpacks, travel bags, duffel bags, baseball hats, equipment, and related sported goods and sportswear. Complainant has registered the SOCCER MALL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,986,219, filed Sept. 16, 2014, registered June 28, 2016). The <soccermall.com> domain name is confusingly similar to Complainant’s mark, save for the elimination of the space between the words of Complainant’s mark and the affixation of the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, and Complainant has not granted any permission to Respondent to use the domain name. Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the websites to which the domain name redirects contain links to products that are directly competitive with Complainant’s business. Additionally, the websites to which the domain name redirects contain displays offering the domain name for sale.
iii) The domain name was registered and is being used in bad faith. First, Respondent has made general offers to sell the domain name. Second, the websites to which the domain name redirects contain links to products that are directly competitive with Complainant’s business. Third, because Complainant’s application with the USPTO predates Respondent’s acquisition of the domain name, May 4, 2015, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark; the domain name has changed ownership at least three times within the past two years, which suggests that the most recent “Updated Date” is the earliest date Respondent could claim as an acquisition date.
Respondent has not submitted a Response in this proceeding. The Panel notes that the domain name was registered on August 10, 2000.
The proceeding brought by the Complaint is barred by the Forum’s earlier decision, FA 1689685.
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."
Preliminary Issue 1: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Complainant makes the following contentions in support of its argument:
i) The disputed domain name is in English;
ii) All websites to which the domain name resolves are in English;
iii) The offers for sale of the domain name are made in English;
iv) The domain name parking services used by Respondent are in English;
v) The items for sale on the websites are in English. Moreover, the term “soccer” that is used to refer to the sport on all the websites, is a term used primarily in English-speaking countries;
vi)The Registrar’s website, domainerschoice.com, describes itself as a one-stop service center for bulk domain registration, domain monetization, and domain sales and auctioning;
vii) Complainant is a small business operator in the United States; and
viii) Respondent has concealed its identity through a Private Registration.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Preliminary Issue 2– Res Judicata
Complainant has alerted this Panelist to the existence of Forum UDRP Case No. FA 1689685, decided by a single-member Panel on October 5, 2016, which arose between the same parties and concerned the same domain name, “soccermall.com.” The key findings of the single-member Panel in that case, decided a mere two months ago, are:
While Respondent makes no contentions with regard to the application of Policy ¶ 4(a)(iii) to the facts set out in the Complaint filed in this proceeding, we are obliged to take note of the fact that the record shows the date on which Complainant first used the SOCCER MALL mark in commerce was October 10, 2000. This is two months after Respondent’s August 10, 2000 registration of the <soccermall.com> domain name. We also note that the Complaint claims that Complainant holds a registration for the SOCCER MALL service mark, on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,986,219, application for which was filed September 16, 2014, with registration granted on June 28, 2016. Thus both the application filing and registration dates for the mark fall years after Respondent is reported to have registered the contested domain name. In light of this, it is impossible for us to find that Respondent registered the domain name in bad faith.
Concluding in that UDRP administrative proceeding that Respondent could not have registered the domain name in bad faith, the Panel dismissed the Complaint.
No doubt disappointed with the decision reached by the earlier single-member Panel in Forum Case No. FA 1689685, Complainant has instituted this UDRP proceeding with the Forum to have “a second bite at the cherry,” no doubt with a view to obtaining a favorable result the second time around. Complainant presents as new evidence the assertion that Respondent did not initially register the domain name in August 2000; rather, Complainant contends that Respondent acquired the domain name on May 4, 2015, after Complainant filed for its now registered SOCCER MALL trademark, and after Complainant’s purported first use in commerce date of October 10, 2000. In support of this contention, Complainant argues that the domain name has changed ownership at least three times within the past two years, which suggests that the most recent “Updated Date” is the earliest date Respondent could claim as an acquisition date. Specifically, Complainant claims that in 2014, the domain name was registered to Level2, LLC (Updated Date of Oct. 15, 2015), in January 2015, the domain name was acquired by a different registrant, Privacy Protection Services INC d/b/a PrivacyProtect.org, and in May 2015, the current Respondent acquired the domain name.
Complainant’s action is barred by res judicata, a legal principle that a final decision on the merits by a court or tribunal having jurisdiction, is conclusive between the parties to a suit as to all matters that were argued, or that could have been argued, in the earlier proceeding. Typically, complaints may not be resubmitted for relief subsequent to their denial due to res judicata principles unless the complainant meets its high burden of demonstrating the need for such additional review. See, e.g., Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001) (finding that the burden of establishing that a second complaint should be entertained is “high”). Several criteria have been set forth for determining whether a complaint may be refiled. See Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000) (noting, and subsequently applying to the UDRP, the four common-law grounds for the rehearing or reconsideration of a previously filed decision as (1) serious misconduct on the part of a judge, juror, witness or lawyer; (2) perjured evidence having been offered to the court; (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or (4) a breach of natural justice).
The Panel is of the view that Complainant’s argument may relate to only item (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial. As stated above, Complainant presents as new evidence the assertion that Respondent did not initially register the domain name in August 2000; rather, Complainant contends that Respondent acquired the domain name on May 4, 2015. However, the Panel thinks that this evidence could have been reasonably foreseen or known in the course of the proceedings of FA 1689685. As such, the Panel determines that Complainant has not met the burden of demonstrating the need for additional review, and thus it holds that this proceeding is barred by the Forum’s earlier decision, FA 1689685.
As the proceeding brought by the Complaint is barred by the Forum’s earlier decision, FA 1689685, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <soccermall.com> domain name REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: December 22, 2016
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