Syncopated Software Development Corporation
v. Do Life Right
Claim Number: FA0608000780309
PARTIES
Complainant is Syncopated Software Development Corporation (“Complainant”), P.O. Box 160634, Austin, TX 78716-0634. Respondent is Do Life Right (“Respondent”), 3040 W. Curly Horn Rd., Sahuarita, AZ 85629.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <syncopatedsoftware.biz>,
<syncopatedsoftware.com>, <syncopatedsoftware.info> and <syncopatedsoftware.net> (collectively, the “Domain Names”),
registered with Go Daddy Software, Inc.
PANEL
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.
David H. Bernstein as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 17, 2006; the National Arbitration Forum received a
hard copy of the Complaint on August 21, 2006.
On August 18, 2006, Go Daddy Software, Inc. confirmed by email to the
National Arbitration Forum that the Domain Names are registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the Domain
Names. Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy Software, Inc. registration
agreement and has thereby agreed to resolve domain name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On August 29, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 18, 2006 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via email, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@syncopatedsoftware.biz,
postmaster@syncopatedsoftware.com, postmaster@syncopatedsoftware.info and
postmaster@syncopatedsoftware.net by email.
A timely Response was received and determined to be complete on September
1, 2006.
On September 12, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David H. Bernstein as Panelist.
RELIEF SOUGHT
Complainant requests that the Domain Names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that the Domain Names are identical or confusingly
similar to its registered SYNCOPATED SOFTWARE service mark. Complainant filed an application to register
the mark SYNCOPATED SOFTWARE with the United States Patent and Trademark Office
(“USPTO”) on October 27, 2004 claiming first use of the mark as of October 12,
2004. On May 9, 2006, the USPTO
registered the mark as U.S. Trademark Registration Number 3,091,462. Complainant alleges that the Domain Names
each include the exact words of the SYNCOPATED SOFTWARE mark followed by a gTLD.
Complainant alleges that Respondent does not own any rights to or have
a legitimate interest in the Domain Names.
In support of this allegation, Complainant notes that Respondent has not
registered the names “Syncopated Software, Inc.” or “Sync O’Pated Software,
Inc.” – both phrases which have appeared on Respondent’s website –
with the Corporate Commission of Arizona, the state in which Respondent
resides.
Complainant also alleges that Respondent registered and used the Domain
Names in bad faith. The totality of
Complainant’s allegations of Respondent’s bad faith are set out below:
(A) Respondent apparently registered the domain names only after
Complainant filed for trademark registration and began regular use of its
trademark on Complainant’s website;
(B) Respondent demanded compensation when advised of Respondent’s
infringement;
(C) Respondent responded to Complainant’s advise of infringement via
Complainant’s Web site though no reference to it was made, suggesting that
Respondent was either already aware of Complainant’s use of the trademark or
had the ability to find Complainant’s use of the trademark via such a search
prior to registering the domain names;
“(D) Respondent responded to Complainant’s advise of infringement by
mocking Complainant, changing the text on Respondent’s Web site from
‘Syncopated Software, Inc.’ to ‘Sync O’Pated Software, Inc.’”
B. Respondent
Respondent does not dispute that the Domain Names are confusingly
similar to Complainant’s registered service mark.
Respondent claims that it has a legitimate interest in the Domain Names
because Respondent undertook preparations to form an operating system software
company called “Syncopated Software” in December 2005, prior to learning of
this dispute. Respondent alleges that
it searched for the phrase “Syncopated Software” on various search engines and
on the USPTO website, www.uspto.gov, and found no results (though Respondent
now realizes that it erroneously searched the USPTO website itself rather than
the USPTO’s TESS database of trademark applications and registrations). Respondent alleges that, prior to being
contacted by Complainant regarding the Domain Names in April 2006, it took
steps to create its company by registering the Domain Names and by contacting
accountants, lawyers, venture capitalists, and a graphic designer in order to
form a business entity called “Syncopated Software.” Additionally, Respondent claims that, because it contacted
potential investors using the name “Syncopated Software,” it was commonly known
by that name.
Respondent alleges that it did not register the Domain Names in bad
faith. Respondent asserts that it did
not register the Domain Names for the purpose of selling, renting, or otherwise
transferring the Domain Names.
Respondent does not deny that, after receiving notice that Complainant
wished to contact Respondent regarding the Domain Names, Respondent contacted
Complainant through Complainant’s website.
However, Respondent alleges that it found Complainant’s website by
searching for “John Carlsen” in Austin, Texas – information regarding
Complainant provided by Domains By Proxy – on the Internet and not, as
Complainant alleges, by searching for the phrase “Syncopated Software.” Respondent claims that, after conducting
this search, it first learned of Complainant; until that time, Respondent was
unaware of Complainant or its use of the SYNCOPATED SOFTWARE mark.
Respondent claims that, once it was notified by Complainant that
Complainant owned the SYNCOPATED SOFTWARE service mark, Respondent offered to
sell the Domain Names to Complainant for $67.60, an amount equal to
Respondent’s out-of-pocket expenses in registering the Domain Names. Respondent states that it did not offer to
sell the Domain Names to any other party.
Respondent also alleges that after Complainant’s refusal to purchase
the Domain Names, Respondent changed the name displayed on its website from
“Syncopated Software” to “Sync O’Pated Software” and displayed a disclaimer
stating: “This site is in no way affiliated with Syncopated Software®
Development Corporation of Austin, TX.”
Respondent claims that these measures were taken to comply with
Complainant’s request to cease using the SYNCOPATED SOFTWARE mark.
Respondent’s principal, Gregory D. Bentley, certifies that, at the time
he registered the Domain Names, he was not aware of Complainant’s registered
service mark or its use of that mark and, therefore, did not intend to register
the Domain Names to prevent Complainant from reflecting the mark in a corresponding
domain name. Respondent further alleges that it has never engaged in
registering domain names in order to prevent a service mark or trademark holder
from reflecting its mark in a domain name.
Respondent claims that it did not register the Domain Names to disrupt
Complainant’s business because Respondent was unaware of the existence of
Complainant’s business. Furthermore,
Respondent asserts that its operating software business would not be in
competition with Complainant’s gaming software business because both Respondent
and Complainant focus on different types of software.
Respondent asserts that it did not attempt to attract, for commercial
gain, Internet users to Respondent’s website or other on-line location by
creating a likelihood of confusion. Respondent
claims that it could not have had such an intention because it was unaware of
the existence of Complainant’s business or service mark.
FINDINGS
The Panel finds that Complainant has
demonstrated rights in the SYNCOPATED SOFTWARE mark and that the Domain Names
are confusingly similar to the SYNCOPATED SOFTWARE mark. Complainant also has shown (albeit on a thin
record) that Respondent lacks a legitimate interest in the Domain Names. However, Complainant has failed to show that
Respondent registered the Domain Names in bad faith. For that reason, the Complaint must be denied.
The Panel also finds the Complaint was
brought in bad faith and therefore constitutes Reverse Domain Name Hijacking.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute
Resolution Policy (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 the 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 the respondent is identical or confusingly similar to a trademark
or service mark in which the complainant has rights;
(2)
the 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.
Respondent does not dispute that Complainant
owns a federally-registered trademark and that the Domain Names, incorporating
the trademark in its entirety, are confusingly similar to Complainant’s
mark. The Panel agrees, and therefore
Complainant has carried its burden on the first factor.
Complainant has made a prima facie showing that Respondent lacks rights to or legitimate
interests in the Domain Names. Because
it is difficult to produce evidence to support a negative statement, the
threshold to prove a lack of legitimate interest is low. Starwood
Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat.
Arb. Forum Mar. 9, 2005) (“unsupported assertions … are sufficient to make a prima facie showing in regard to the
legitimacy element”). Here, Complainant
alleges that Respondent has no rights or legitimate interests in the Domain
Names. Furthermore, Complainant notes
that Respondent has not formally incorporated an entity under the names “Syncopated
Software, Inc.” or “Sync O’Pated Software, Inc.” with the Arizona Corporation
Commission. These allegations, though
thin, are sufficient enough to establish a prima
facie showing with respect to the legitimacy element, and to shift the
burden of production to Respondent to come forward with evidence of its rights
to or legitimate interests in the Domain Names. Document Techs., Inc. v.
Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 8, 2000).
According to Paragraph 4(c) of the Policy,
Respondent may demonstrate right to or legitimate interests in the Domain Names
by showing any of the following circumstances:
(i) before any notice to [the Respondent] of
the dispute, its use of, or demonstrable preparations to use, the Domain
Name[s] or a name corresponding to the Domain Name[s] in connection with a bona
fide
offering of goods or services; or
(ii) [the Respondent] (as an individual,
business, or other organization) has been commonly known by the Domain Name[s],
even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate
noncommercial or fair use of the Domain Name[s], without intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue.
Respondent alleges that it has taken steps to
use the Domain Names in connection with a bona fide offering of goods or
services. The submitted evidence
includes emails seeking venture capital and legal assistance to create a
business under the SYNCOPATED SOFTWARE name.
For purposes of this proceeding, though, these emails alone are not
sufficient to satisfy the level of proof required by the Policy because they do
not constitute evidence of demonstrable preparations. At best, the emails prove that Respondent
had an interest in creating a company using this name, but they do not show
that Respondent took concrete steps such as incorporation, the drafting of a
business plan, the design of a website, or the creation of promotional
materials. See World Wide Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles,
D2000-1306 (WIPO Jan. 24, 2001); cf. AutoNation Holding Corp. v. Alaweh,
D2002-0058 (WIPO May 1, 2002) (finding that the respondent submitted
“substantial, overwhelming and undisputed evidence” of its preparations); Titan Indus. Ltd. v. Tanishq Corp. D2000-1793
(WIPO Mar. 14, 2001) (finding that the respondent made demonstrable
preparations where it received governmental certification and entered into
business contracts).
Similarly insufficient is Respondent’s claim
that it was “commonly known” by the Domain Names. Although the emails show that a few potential business partners
were aware of Respondent’s intentions and its use of SYNCOPATED SOFTWARE as part
of its email address, that evidence falls far short of the sharing necessary to
show that this knowledge was “common.”
Accordingly, based on the very limited record
submitted, the Panel finds that Complainant has made a prima facie showing that Respondent lacks any rights or interests
in the Domain Names, and Respondent has failed to rebut that showing.
Paragraph 4(b) of the Policy states that any
of the following circumstances, in particular but without limitation, shall be
considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the
Respondent has] registered or 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 documented out-of-pocket costs directly related to the domain name;
or
(ii) [the 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 it has
engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the
domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, [the
Respondent] intentionally attempted to attract, for commercial gain, Internet
users to its 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 [the Respondent’s] website or location or of a
product or service on [the Respondent’s] website or location.
Complainant’s allegations fail to establish
Respondent’s bad faith in registering and using the Domain Names. At best, they merely establish that
Respondent registered the Domain Names after Complainant filed for trademark
registration. Complainant did not,
however, make any showing that Respondent knew of Complainant and its mark, let
alone that it registered the Domain Names with a bad faith intent to wrongfully
profit from Complainant or its trademark rights. Equally without merit is Complainant’s allegation that Respondent
must have registered the Domain Names in bad faith merely because it demanded
compensation for the Domain Names.
Although an effort to sell a domain name may, in appropriate
circumstances, constitute evidence of bad faith, the uncontroverted evidence
here is that the price requested was equal to Respondent’s cost of
registration. The Policy ¶ 4(b) makes
it clear that the offer to sell a domain name is evidence of bad faith only if
the consideration is “in excess of the documented out-of-pocket costs directly
related to the domain name.” See Broadcom Corp. v. Corporategamer.com,
FA0101000096355 (Nat. Arb. Forum Feb. 12, 2001) (noting that a respondent’s
demand for compensation, without more, is not in bad faith when it is equal to
its out-of-pocket costs). Thus,
Respondent’s willingness to sell the Domain Names to Complainant in return for
recovery of its registration costs is, if anything, evidence of Respondent’s
good faith, not of bad faith registration.
Similarly, Respondent’s ability to respond to
Complainant’s notice of infringement via Complainant’s website does not
establish Respondent’s bad faith because Respondent credibly explains that it
was able to find Respondent’s website after searching for Respondent on the
Internet by searching for “John Carlsen” in Austin Texas.
Further evidence of Respondent’s lack of bad
faith was provided by Respondent.
Respondent’s representative certified that he had no knowledge of
Complainant’s service mark prior to registering the Domain Names. That assertion is credible in this case because
Complainant has submitted no evidence that Respondent actually was aware of
Complainant (e.g., that they had conducted business together) or that
Complainant was so well known at the time Respondent registered the Domain
Names that Respondent must have been aware of Complainant’s trademark
rights. If Respondent had no knowledge
of Complainant’s service mark at the time of registration, Respondent could not
have registered the Domain Names in bad faith with respect to that mark. See
Primal Quest, LLC v. Gabrial Salas, D2005-1083 (WIPO Dec. 15, 2005)
(respondent could not have registered domain name in bad faith towards the
complainant’s marks if it had not heard of the complainant or its service marks
prior to registration).
Respondent’s certification is particularly
credible here given Respondent’s response to Complainant’s concerns regarding
the Domain Names. Once informed of the
existence of Complainant’s mark, Respondent notified Complainant that Respondent
was still early in the formation of its company, and that it was willing to
change its planned corporate name and Domain Names. In return for transferring
the Domain Names to Complainant, Respondent asked only for a payment of $67.60
to compensate Respondent for its expenses in registering the Domain Names. Complainant does not deny Respondent’s
assertion, but rather relies on the indefensible argument that Respondent’s
demand for any compensation is
evidence of bad faith.
For all these reasons, the Panel finds that
Respondent did not register or use the Domain Names in bad faith, and that the
Complaint must thus be denied.
Reverse
Domain Name Hijacking
Although Respondent
has not requested a finding of Reverse Domain Name Hijacking, under the Rules,
the Panel must also consider whether a finding of Reverse Domain Name Hijacking
is nevertheless appropriate. Goway Travel Limited v. Tourism Australia, D2006-0344 (WIPO June 6,
2006). That is because Paragraph 15(e) of the Rules provides:
If after
considering the submissions the Panel finds that the complaint was brought in
bad faith, for example in an attempt at Reverse Domain Name Hijacking or was
brought primarily to harass the domain-name holder, the Panel shall declare in
its decision that the complaint was brought in bad faith and constitutes an
abuse of the administrative proceeding.
Complainant’s decision to file the instant
Complaint notwithstanding Respondent’s demonstrably good faith offer to sell
all four Domain Names in return only for reimbursement of Respondent’s
registration cost ($67.70) is not only incomprehensible (given that the $1,450
filing fee paid by Complainant to commence this proceeding was more than twenty
times that amount), but also is indicative of Complainant’s bad faith. In the face of Respondent’s reasonable offer,
Complainant had no basis to refuse to reimburse Respondent for its registration
costs and instead invoke the Policy.
The Panel thus finds that Complainant’ filed this proceeding not to
recover Domain Names that had been the subject of abusive cybersquatting, but
rather for the purpose of harassing the Respondent. Such behavior is Reverse Domain Name Hijacking under the Policy.
DECISION
Because Complainant failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED. Further, the Panel declares that the
Complaint was brought in bad faith and thus constitutes Reverse Domain Name
Hijacking.
David H. Bernstein, Panelist
Dated: October 2, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum