RivNay, LLC v. STW Services LLP
Claim Number: FA1812001821756
Complainant is RivNay, LLC (“Complainant”), represented by Jeffrey M. Rosenfeld of KRONENBERGER ROSENFELD, LLP, San Francisco, California, USA. Respondent is STW Services LLP (“Respondent”), represented by Ankur Raheja, Agra, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <sayulita.com>, registered with Domainshype.Com, 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.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 18, 2018; the Forum received payment on December 18, 2018.
On December 20, 2018, Domainshype.Com, Inc confirmed by e-mail to the Forum that the <sayulita.com> domain name is registered with Domainshype.Com, Inc and that Respondent is the current registrant of the name. Domainshype.Com, Inc has verified that Respondent is bound by the Domainshype.Com, 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 December 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 14, 2019 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@sayulita.com. Also on December 21, 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 January 14, 2019.
On January 18, 2019, Complainant timely filed an Additional Submission. On January 22, 2019, on due time Respondent filed an Additional Submission. Both complying with Supplemental Rule 7.
On January 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a. Complainant is a web marketing and specialty apparel designer, which has developed multiple brands that it uses in connection with its web marketing and apparel.
b. Complainant has trademark rights over the sign SAYULITA through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,150,000, registered May 29, 2012). (Annex 1.H to the Complaint).
c. Complainant registered the disputed domain name since 1996 (Annex 1.C to the Complaint).
d. Complainant has used the SAYULITA mark continuously since 1992.
e. Respondent’s disputed domain name <sayulita.com> is identical to Complainant’s trademark as it incorporates the trademark in its entirety with a “.com” generic top-level domain (“gTLD”).
f. Respondent has no rights or legitimate interests in the disputed domain name <sayulita.com>.
g. Respondent is not authorized to use Complainant’s trademark SAYULITA in any way and is not commonly known by the disputed domain name.
h. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent hijacked the disputed domain name and now uses it to mimic Complainant’s website.
i. Respondent registered and uses the disputed domain name in bad faith.
j. Respondent disrupts Complainant’s business as it hijacked the disputed domain name and now uses it to pass off as Complainant.
k. Respondent also attempts to attract, for commercial gain, users to the disputed domain name where it features pay-per-click links.
B. Respondent
a. Respondent contends that the immediate dispute between the parties is a civil dispute.
b. Respondent was employed by Complainant as a Webmaster for its internet assets, including the disputed domain name.
c. Complainant cannot claim exclusive rights in the trademark SAYULITA as it is a geographic term for a coastal village in Mexico.
d. Respondent has rights and legitimate interests in the disputed domain name.
e. Respondent runs a multiple website development agency and has had an exclusive contract with Complainant since 2011. Under this contract, Respondent was given exclusive ownership and control over the disputed domain name.
f. Respondent did not register or use the disputed domain name in bad faith.
g. The disputed domain name resolves to a website that provides information on beaches, hotels, weather, and other useful information, whereas Complainant’s mark covers apparel-related goods.
h. Respondent also denies that it “hijacked” Complainant’s website; rather, Respondent entered into a contract with Complainant to oversee the development of the disputed domain name and Complainant failed to pay its dues for those services.
i. Finally, Respondent did not register or use the disputed domain name with the intent to disrupt Complainant’s business nor create user confusion.
C. Additional Submissions
a. Complainant
This action can be decided under the UDRP Policy since there is a wide range of decisions, in which Panels have decided that even when a web developer retains its client’s domain as part of a payment dispute, such theft is still within the scope of the UDRP.
b. Respondent
i. Respondent objects the admission of Complainant’s additional submission.
ii. Under the Policy, parties have no right to submit additional arguments or evidence.
iii. Respondent denies having stolen the disputed domain name.
iv. Seems that the third party, Hotelier at Sayulita, Mexico has intentions to take over the disputed domain name.
v. Complainant should have realized that it was obvious that this claim could not succeed, but instead of withdrawing it, pressed its case in its Additional Written Statement, thereby compounding its bad faith in bringing a futile Complaint.
1. Complainant owns the trademark SAYULITA in the United States of America, since before the disputed domain name was transfer to Respondent.
2. Respondent was aware of Complainant’s rights in the trademark SAYULITA, as Respondent was Complainant’s webmaster.
3. The disputed domain name incorporates Complainant’s trademark.
4. Complainant has never authorized, licensed or otherwise permitted Respondent to use the trademark SAYULITA, nor is Respondent an authorized vender, supplier or distributor of Complainant’s goods and services.
5. Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services.
6. Respondent used the information given to him as a webmaster to abusively transfer Complainant’s domain name to its property.
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 discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all, the Panel will address Respondent’s assertion of a contractual dispute. Secondly, the Panel will consider Respondent’s objection to the Additional Submission. Thirdly, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Fourthly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and finally, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent.
Preliminary Issue: Business/Contractual Dispute
Respondent contends that the immediate dispute between the parties is a civil dispute. Respondent bases this argument in the fact that it entered into a contract with one of Complainant’s founders, Mr. Mark Rubio (now deceased), in 2011 as a Webmaster, from which Respondent alleges to have right to transfer the disputed domain name ownership in case of default.
However, Respondent did not provide any proof to evidence that the terms of the agreement between the now Complainant and Respondent allowed it to transfer the ownership of the disputed domain name.
Thus, the transfer of the disputed domain name is not supported and cannot be accounted for by the terms proved by the parties. Hence, if there is a civil case it may rely upon Complainant’s default; nevertheless, the proven facts of the claim herein fall within the limited “cybersquatting” scope of the UDRP.
Furthermore, paragraph 4(k) of the Policy contemplates that at any time, either Party may seek judicial remedies regarding the disputed domain name. However, there is no evidence that either Respondent or Complainant have initiated any judicial action.
Moreover, based on paragraph 18(a) of the Policy, in its sole discretion, this Panel may suspend or terminate the administrative proceeding if any legal proceedings are initiated prior to or during the administrative proceeding which in this case have not been proven.
Consequently, this Panel considers inadmissible and irresponsible to suspend or terminate the administrative proceeding based on a mere speculation of Respondent (the allege terms of the webmaster agreement), where there is lack of evidence to support its claim.
Preliminary Issue: Additional Submissions
Respondent objects the admission of Complainant’s additional submission, arguing that its filing does not comply with the procedural rules of a UDRP proceeding.
This Panel reminds Respondent, that the proceeding is ruled by the Forum’s SUPPLEMENTAL RULES TO ICANN'S UDRP, in which Supplemental Rule 7 clearly states that:
“(a) A party may Submit additional written statements and documents to the Forum and the opposing party(s) within five (5) Calendar Days after the date the Response was received by the Forum, or, if no Response has been filed, the last date the Response was due to be received by the Forum.
(b) Each additional submission pursuant to Supplemental Rule 7(a) must:
(i) be timely received by the Forum;
(ii) be accompanied by an additional submission fee of $400;
(iii) include proof of service of these submissions upon the opposing party(s); and
(iv) be Submitted electronically via email to the case coordinator and/or to domaindispute@adrforum.com.
(c) The party(s) not filing the original additional submission under 7(a) may file additional written statements and documents to the Forum within five (5) Calendar Days after the date the original additional submission was received by the Forum.
(d) Each additional submission pursuant to Supplemental Rule 7(c) must:
(i) be timely received by the Forum;
(ii) include proof of service of these submissions upon the opposing party(s); and
(iii) be Submitted electronically via email to the case coordinator and/or to domaindispute@adrforum.com.
(e) Each party is limited to one additional submission under either 7(a) or 7(c), but not both.
(f) Additional submissions must not amend the Complaint or Response”.
Thus, Complainant filing complied with the Supplemental Rule 7 of the Forum, since the Supplemental Rules are clear concerning the requisites to be completed for the filing to be valid.
It is not acceptable for the Parties or the Panel, to include additional requirements from those clearly stated by the Supplemental Rules.
Consequently, the Panel, following the Supplemental Rules of the Forum, will consider the arguments and evidence filed by both Complainant and Respondent in their Additional Submissions.
Complainant contends to be the owner of the trademark SAYULITA in the United States of America, since May 29, 2012, which has been continuously used since 1992 to identify board shorts; hats; hooded sweat shirts; shirts; shirts and short-sleeved shirts; short-sleeved or long-sleeved t-shirts; shorts; surf wear; sweat pants; sweat shirts; t-shirts; tank tops.
a) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.
The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[i] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant proved its rights in the trademark SAYULITA (Annex 1.H to the Complaint).
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use them in connection with the stated goods. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.[ii]
Thus, Complainant established its rights in the trademark SAYULITA.[iii]
Respondent argues that SAYULITA is generic since it is a geographic term for a coastal village in Mexico. Nonetheless, the Panel considers the trademark to be distinctive as it identifies goods of international class 25, for which the expression SAYULITA is arbitrary. In fact, the term SAYULITA is not the name of any of the goods or the genus of international class 25.
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark SAYULITA for purposes of Paragraph ¶ 4(a)(i) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and Complainant’s trademark
Complainant alleges that the disputed domain is identical to the trademark SAYULITA.
On the first place, before establishing whether or not the disputed domain name <sayulita.com> is confusingly similar to Complainant’s trademark SAYULITA, the Panel wants to point out that the addition of generic top-level domain (“gTLD”), i.e., “.com,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[iv]. Neither the addition of country-code top-level domains (“ccTLD”), i.e., “.co,” “.de,” “.cr,” “.es,” nor the insertion of a gTLD has a distinctive function[v].
UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:
“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”
Furthermore, the Panel considers that the reproduction of the trademark SAYULITA, by the disputed domain name <sayulita.com>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[vi], mainly since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is Complainant.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus, the requirement set forth in Paragraph ¶ 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of Respondent[vii].
In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a Complainant is required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[viii]. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <sayulita.com> because of the following: i) Respondent has not been authorized by Complainant to transfer to its ownership the disputed domain name; ii) Respondent is not commonly known by the SAYULITA; iii) Respondent hijacked the disputed domain name from Complainant; iv) Respondent transferred and uses the disputed domain name to trade off Complainant’s good will by mimicking Complainant’s previous website; and iv) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent argues to be in a civil dispute, of which no evidence has been filed. Moreover, Respondent argues to have intellectual property rights in the content and the design of the website, which is also not proven and tries to conclude therefore that Respondent has rights in the disputed domain name.
Respondent confuses the disputed domain name with the website and its content and tries to extend any claim it may have to the disputed domain name.
As webmaster, Respondent could have had the control over the disputed domain name, but this control did not entail the property of the same and Respondent failed to prove any right or agreement between Complainant or Mark Rubio with Respondent that could support the transfer. Thus, the transfer of the disputed domain name from Complainant to Respondent is not justified by any means and there is an obvious lack of evidence concerning that specific issue.
If Respondent requires payment for its labor, it can initiate a collection proceeding, but it cannot in good faith transfer a third party’s domain name and trying to profit from it to obtain said payment, as there is no evidence that it was authorized or that it was agreed for it to proceed in that regard.
Furthermore, Respondent argues that its legitimate interests are evident since the website to which the disputed domain name is reverting does not refer in any way to Complainant’s trademark.
This Panel cannot abide by Respondent’s arguments and behavior. The fact that the trademark is not used does not translate in Respondent’s rights or legitimate interest.
Moreover, Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services, as the website of the disputed domain name emulates Complainant’s site. Hence, consumers are not aware that Complainant is no longer running the website of the disputed domain name.
Respondent transfer of the disputed domain name from Complainant is not justified by any means in the evidence filed. The use given to the disputed domain name does not qualify as legitimate noncommercial or fair use.
Respondent did not demonstrate to be known by the disputed domain name and arguing that the trademark is the name of a geographical location, is not a valid defense or a source of rights over the disputed domain name. Specially since Respondent knew of Complainant’s business since 2011.
Complainant registered the disputed domain name since 1996 and has use it to promote its business and profiting from the fact that it coincides with a geographical place by mean of third party’s advertisement (information about Sayulita, Mexico, and links to providers of accommodations and tourism services in Sayulita), which constitutes a legitimate business.
Consequently, this Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain name <sayulita.com>.
Therefore, the second requirement of paragraph 4(c) of the Policy is met.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
In this case, Respondent transferred the disputed domain name primarily for the purpose of disrupting the business of Complainant, as it took from Complainant the means by which they commercialize their goods and obtain income by including information of third parties which were monetized by Complainant.
Additionally, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s trademark and website since after transferring it, Respondent maintained basically the same design of the resulting website. Hence, consumers are not able to differentiate the change of source of origin.
The unjustified transfer of the disputed domain name from Complainant to Responded is enough to determine bad faith registration and use.
From both Complainant and Respondent’s uncontested statements in their Complaint and Response respectively, it is clear that Complainant owned the disputed domain name since 1996 until early 2018. From the same documents is also clear that Responded was Complainant’s webmaster since 2011. What is not proven is the faculty of Respondent to transfer the disputed domain name on its behalf.
Thus, Respondent abused of Complainant’s trust and without authorization or an agreement, transferred the disputed domain name to its property.
Moreover, Respondent tries to justify to this Panel the transference by stating that the expression SAYULITA is generic, after trying to distract the Panel’s attention with procedural outrageous matters, despite of knowing of Complainant’s trademark rights since 2011 and that it was not able to prove any legitimate reason for the transference of the disputed domain name.
Hence, the transfer of the disputed domain name with Respondent clear awareness of Complainant’s rights is evidencing of bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Therefore, the three elements of the Policy ¶ 4 are satisfied in the present case in respect to Respondent of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the disputed domain name <sayulita.com> be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: January 31, 2019
[i] See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO March 23, 2000).
[ii] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[iii] See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”.); see also Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world”).
[iv] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Forum May 18, 2012).
[v] See YottaMark, Inc. v. Lukasz Chudy, FA 1392357 (Forum July 15, 2011)
[vi] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[vii] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO April 24, 2012).
[viii] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 1, 2000).
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