ShippingQuest v. WENDY SULDA
Claim Number: FA1805001785542
Complainant is ShippingQuest (“Complainant”), represented by Raphael Chabura of ShippingQuest, New York, USA. Respondent is WENDY SULDA (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shippingquestscams.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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2018; the Forum received payment on May 15, 2018.
On May 10, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <shippingquestscams.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 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2018 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@shippingquestscams.com. Also, on May 22, 2018, 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 11, 2018.
On June 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Calvin A. Hamilton 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, ShippingQuest, uses the domain name <shippingquest.com>. It is self-evident that Respondent’s <shippingquestscams.com> is identical or confusing to Complainant’s <shippingquest.com> domain name.
Respondent does not have rights or legitimate interests in the <shippingquestscams.com> domain name. Respondent uses the domain name to influence and disrupt Complainant’s business.
Respondent registered and is using the domain name in bad faith by attempting to disrupt Complainant’s business.
B. Respondent
Complainant’s <shippingquest.com> website is used for a fraudulent shipping entity, which provides low quotes and then increases the quoted fee after Complainant has possessions of its customers’ belongings. Respondent was a victim of Complainant’s fraudulent business and Respondent published negative reviews regarding Respondent’s experience with Complainant’s business. In response, Complainant threatened to destroy Respondent’s reputation and business by posting false and defamatory content about Respondent online. See Resp. Annex 2. In March 2017, Complainant purchased the domain name <wendysulda.com>, which fully incorporates Respondent’s name, Wendy Sulda. The <wendysulda.com> domain name resolved to a website containing a photograph of Respondent accompanied by sexually suggestive photographs and offers for “Erotic Massage.” Id.
Respondent sued Complainant under violation of the federal Anticybersquatting Consumer Protection Act, trademark infringement, copyright infringement, defamation, false light, promissory fraud and a consumer protection statute under Illinois state law. Respondent’s claims were reduced to judgment in the amount of $100,000 plus costs and attorney’s fees on January 29, 2018. See Resp. Annex 2.
Complainant failed to establish rights in a mark as Complainant did not make any arguments as to common law or trademark rights in any mark.
Complainant merely asserts the legal conclusion that Respondent lacks rights and legitimate interests in the domain name without alleging any facts related to Respondent’s use. Further, Respondent’s use of the <shippingquestscams.com> domain name for a “gripe site,” constitutes a bona fide offering of goods or services or legitimate noncommercial or fair use under the Policy, and is illustrative of Respondent’s rights and legitimate interests in the domain name.
Complainant failed to show that Respondent registered and used the domain name in bad faith. Moreover, Complainant engaged in reverse domain name hijacking by filing the complaint. Complainant knew or should have known that it had no chance of providing bad faith registration or violation of trademark rights as it has not and cannot present evidence of either a registered or common law 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
(3) the domain name has been registered and is being used in bad faith.
Complainant does not make any arguments as to its rights in the SHIPPINGQUEST mark, however, Complainant alleges it uses the domain name, <shippingquest.com>. See Amend. Compl. Annex 1. Respondent admits as much when it suggests that Complainant quotes low prices and then once the customer commits, Complainant then raises its prices. While Complainant does not argue common law rights in the SHIPPINGQUEST mark, registration of a domain name that is identical to a mark may be evidence of common law rights in a mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”).
The Panel concludes that Complainant’s registration of the <shippingquest.com> domain name sufficiently establishes secondary meaning in the SHIPPINGQUEST mark. As a consequence, Complainant has established its common law rights in the mark.
Complainant argues that it is self-evident that Respondent’s <shippingquestscams.com> is identical or confusing to Complainant’s <shippingquest.com> domain name. While Complainant makes no specific arguments as to the confusing similarity between the domain names, the Panel notes that Respondent’s domain name differs from Complainant’s by the addition of the term “scams.” The addition of a descriptive term may not negate confusing similarity. AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”).
The Panel concludes that Respondent’s <shippingquestscams.com> domain name is confusingly similar to Complainant’s <shippingquest.com> domain name.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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”).
Complainant alleges that Respondent does not have rights or legitimate interests in the <shippingquestscams.com> domain name because Respondent uses the domain name to influence and disrupt Complainant’s business. Complainant does not make any specific arguments under Policy ¶ 4(a)(ii), and merely states self-serving contentions that are not supported by evidence. Absent a showing of any facts by a complainant that establish a respondent lacks rights or legitimate interests in a disputed domain name, a panel may conclude that the complainant failed to establish a prima facie showing under Policy ¶ 4(a)(ii). See Rotobrush International LLC v. vacbrush a/k/a ming liu, FA 1253370 (Forum May 8, 2009) (finding, “Complainant has failed to allege any facts whatever in support of its bald assertion that Respondent lacks rights to or legitimate interests in the disputed domain names, including as to the specifics of Respondent’s use or nonuse of the domain names. Thus we are forced to conclude that Complainant has failed to make out a prima facie showing under Policy ¶ 4(a)(ii).”). See also, High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)).
Based on the evidence, the Panel finds that Complainant failed to establish a prima facie showing of Respondent’s lack of rights or interests in the <shippingquestscams.com> domain name.
Further, Respondent contends it uses the <shippingquestscams.com> domain name for a “gripe site.” Use of a domain name to criticize a company is prima facie fair use. See Shell Int’l Petroleum Co. Ltd. v. Donovan, D2005-0538 (WIPO Aug. 8, 2005) (“The use of a domain name to criticize a company is prima facie fair use. The Respondent is entitled to use the Internet to use his free speech rights and express his opinion in this way, subject to other laws of course (copyright, libel, etc.).”); see also Homer TLC, Inc. v. GreenPeople, FA 550345 (Forum Oct. 25, 2005) (holding that the respondent’s use of the <homedepotsucks.com> domain name as a protest site was a legitimate noncommercial or fair use).
Respondent provided screenshots of its <shippingquestscams.com> website, which indicate that the site features information about how Complainant’s fraudulent business operates, Respondent’s experience with Complainant’s business, and a copy of the judgment issued against Complainant. See Resp. Annex 2.
The Panel, based on the evidence, concludes that Respondent’s use of the domain name to host a complaint site constitutes a public service and is illustrative of Respondent’s rights and legitimate interests in the domain name.
Complainant asserts that Respondent is using the <shippingquestscams.com> domain name to disrupt Complainant’s business. Use of a domain name for the purpose of disrupting a Complainant’s business may evidence bad faith registration and use under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). Complainant offered no specific facts or evidence to support its conclusion that Respondent uses the domain name to disrupt Complainant’s business.
However, Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
The Panel has determined that Respondent has rights or legitimate interests in the <shippingquestscams.com> domain name pursuant to Policy ¶ 4(a)(ii), therefore, the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
The Panel concludes that Respondent failed to establish that Respondent registered and is using the domain name in bad faith.
Reverse Domain Name Hijacking
Respondent claims that Complainant engaged in reverse domain name hijacking by filing the complaint. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <shippingquestscams.com> domain name, of its rights to use the disputed domain name. Respondent alleges that Complainant knew Respondent had rights in the disputed domain name as Respondent used the domain name for a legitimate noncommercial use – a complaint site. Respondent further argues that Complainant knew Complainant did not have rights in the SHIPPINGQUEST mark, as Complainant failed to argue any rights in the mark in its Complaint.
However, even though Complainant has failed to satisfy ¶ 4(a)(ii) and (iii) under the Policy, Complainant prevailed on ¶ 4(a)(i). Accordingly, the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
DECISION
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 <shippingquestscams.com> domain name REMAIN WITH Respondent.
Calvin A. Hamilton, Panelist
Dated: June 25, 2018
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