Southpaw Enterprises, Inc. v. HB
Claim Number: FA1406001564451
Complainant is Southpaw Enterprises, Inc. (“Complainant”), represented by Michael Leesman, Ohio, USA. Respondent is HB (“Respondent”), represented by Charles M. Yoon of Yoon & Kim LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <southpaw.com>, registered with Network Solutions, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2014; the National Arbitration Forum received payment on June 17, 2014.
On June 16, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <southpaw.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 June 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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 postmaster@southpaw.com. Also on June 18, 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 July 18, 2014.
Both parties made Additional Submissions which were compliant with Supplemental Rule 7.
On July 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.
A. Complainant
Complainant asserts trademark rights in SOUTHPAW and alleges that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent generally denies those claims and submits that it registered a domain name consisting of a common, generic word in good faith for use in a business venture associated with the dictionary meaning of the word.
In particular, Respondent acquired the domain name as part of its plan to create a business that specializes in selling left-handed products in the Asian market.
Respondent submits that it did not register the disputed domain name in bad faith because at the time of registration it had no knowledge of Complainant or its claim to trademark rights.
Respondent submits that it did not use the domain name in bad faith since it has not received any income or revenue from use of the domain name. All use was by the domain name registrar which places advertisements on all its “Under Construction” pages over which domain name registrants neither have control nor derive benefit.
Finally, Respondent argues that Complainant has waived any rights it may have to the domain name by virtue of the fact that it has not asserted any claims with respect to the domain name for 19 years since the domain name was registered.
C. Additional Submissions
As indicated above, both parties made Additional Submissions which the Panel has taken into account in reaching its decision and which are referred to as required in the following Discussion.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells products directed to consumers with neurodevelopmental disorders by reference to the trademark, SOUTHPAW.
2. Complainant owns United States Federal Trademark Reg. No. 1,229,489 registered March 8, 1983 for the word mark SOUTHPAW.
3. The disputed domain name was registered on April 18, 1995.
4. Respondent took a transfer of the domain name in 2002.
5. The domain name resolves to a website which is “under construction” but which includes links to third party vendors of various goods including those sold by Complainant.
6. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
Preliminary comments
Panel is not entirely clear whether or not Respondent has made an argument for the application of the principle of laches and a claim of reverse domain name hijacking.
There is certainly discussion of laches in the Complaint and debate on its application in the Additional Submissions but Respondent also makes the statement that:
“Complainant is seeking to deprive Respondent of a domain name comprised entirely of a common, generic word with a widely used dictionary meaning. This is by itself a very high burden that Complainant would have to carry. The additional fact that Complainant has not prosecuted its case for almost 20 years further shows the lack of merit of Complainant’s claims.” [emphasis added]
Primary Issues – The Policy
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office (“USPTO”) trademark registration for SOUTHPAW, the Panel is satisfied that it has trademark rights see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i).
Panel is also satisfied the disputed domain name is legally identical to Complainant’s trademark. The disputed domain name takes the trademark and merely adds the non-distinctive gTLD, “.com.” see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark).
Respondent “expresses no opinion as to the validity of Complainant’s trademark but notes that because Complainant’s trademark consists entirely of a common, generic word, many other companies use the word in their businesses and some of them have trademarks to it. … Thus, the fact that Complainant’s trademark may be similar to Respondent’s domain name is diluted by the reality that many other companies have trademarks to the word southpaw, and, what is more, the word is widely used by English speaking—and some non-English speaking—countries to refer to left-handers.”
Panel notes that paragraph 4(a)(i) of the Policy has been consistently read such that a claim that the trademark or the disputed domain name are generic terms is a matter best left for consideration under paragraph 4(a)(ii) and/or (iii). Panel follows that practice.
Respondent later restates that point in a modified form, asserting that Complainant cannot claim that it has exclusive rights to the word “southpaw” since on the USPTO register there are 42 trademarks containing that word. Panel reminds Respondent that for the purposes of paragraph 4(a)(i) Complainant needs only show trademark rights, not exclusive trademark rights.
Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
Panel observes that Complainant has made very little effort to present even a prima facie case. Nonetheless, Respondent has not taken serious issue with that shortcoming.
The publicly available WHOIS information identifies Respondent as “HB” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant provides evidence that the domain name resolves to a website that carries links to the websites of third parties, some of whom offer goods the same as those offered for sale from Complainant’s website.
Panel finds that such use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Panel finds that the Complaint carries sufficient information to establish a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
Respondent submits that it has rights and legitimate interests in the domain name because (a) “southpaw” is an ordinary word with a commonly understood dictionary meaning and is therefore available to anyone on a first come, first served basis; and (b) Respondent has made demonstrable preparations to use the domain name in connection with a bona fide business.
Respondent states that “numerous panels have found that common, generic words are available for domain name registration on a first come, first served basis.” That statement is not a comprehensive formulation of the way in which the Policy has been applied. Respondent goes on to state that “the fact that Complainant holds a trademark in a common, generic word for a specific commercial use, does not in any way preclude Respondent, or anyone else, from registering and using the domain name <southpaw.com> when used in connection with the dictionary meaning of the word. The difficulty is that this is not how the domain name has been used. On the contrary, it has been used in a manner which collides with Complainant’s business under the trademark.
Respondent’s alternative submission is that it has made demonstrable preparations to use the domain name in connection with a bona fide business. The Response includes sworn evidence to the effect that a Korean born individual, Heesuk “Mike” Kim, is the founder and co-owner of a US business said to be a well-known manufacturer of hair extensions, wigs, hairpieces and similar products. Kim declares that business employs 300 people and had sales of US$300 million in 2013.
Panel pauses to note that neither Heesuk “Mike” Kim, nor the company he founded, is the named Respondent. At one level, this evidence is irrelevant. The Response attempts to explain this by the following statement:
“With regards to the fact that <southpaw.com> was privately registered and that the registrant’s name appears as “HB,” Respondent does not recall why it was registered in this fashion, but Respondent states that at no point has he sought to evade any of his responsibilities as the domain name holder.”
That statement is largely unsatisfactory, a point to which Panel will later return, but for the moment will accept what Respondent has to say for itself.
Respondent states that it came up with the idea of developing a business that specialized in selling left-handed products in Asia. Accordingly it is said that in or about 2002, Respondent acquired the domain because of the dictionary meaning of the word “southpaw” – i.e. - a reference to left-handed person, particularly in sports, such as a left-handed pitcher or boxer. The Response goes on to state that:
“... the fact that Respondent is the founder and owner of a large manufacturing company and was born in Korea provide supporting evidence that Respondent’s planned use of <southpaw.com> is a credible and (sic) business plan.”
Panel does not see any supporting evidence for that conclusion but, in any event, the issue is not simply the legitimacy of Respondent’s business plan, but whether it has a legitimate interest in the disputed domain name itself. Put another way, the question is not (as it is framed by Respondent) whether or not Respondent has made demonstrable preparations to use the domain name in connection with a bona fide business, but whether or not, for the purposes of paragraph 4(c)(i) of the Policy, Respondent has made 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.
In deciding that question, the relevant date is June 18, 2014, the date on which the Forum served the complaint on Respondent. Panel notes, first, that there is no evidence of use, or preparations to use, a name corresponding to the domain name. The issue resolves to whether there is a demonstrated intention to use the domain name in connection with the sale of left-handed goods. Panel notes, secondly, that the use proven to have occurred is utterly unconnected with the sale, or intended sale, of such goods. Panel notes, thirdly, that the alleged proof of preparatory use consists of e-mail exchanges where Respondent states, for example, that it “ha[d] a long term plan for the domain.” Panel finds that those statements are vague and imprecise in terms of the intended use of the domain name, but also fail to qualify as “demonstrable preparations” for use of the domain name. Finally, Panel notes that whilst Respondent only acquired the domain name in 2002, there are examples of the afore-described e-mails dating back to November 2005 with no other suggestion of relevant use over the near decade which has since passed.
Panel finds that Respondent has not shown that it falls within paragraph 4(c)(i) of the Policy and has not otherwise shown a right or legitimate interest in the domain name.
Complainant has satisfied the second element of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(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 the respondent’s 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 Respondent 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 site or location.’
Respondent’s submission, in summary, is that:
“Because Respondent registered a common, generic term, had no actual knowledge of Complainant’s trademark or even of Complainant’s existence, and there is no evidence that Respondent registered the domain name in order to benefit from Complainant’s trademark, the Panel should find that Complainant has not shown that Respondent registered <southpaw.com> in bad faith.”
Panel has determined, on the totality of the evidence, that Respondent’s actions fall under paragraph 4(b)(iv), above. Panel has already found the domain name to be legally identical to the trademark and so there is a per se likelihood of confusion. The resolving website features links to competitive products and so there is likely confusion as to source. The word “intentionally” in paragraph 4(b)(iv) does not require mens rea; it is enough if the actions cause the described consequences. The matter of how Respondent might itself perceive its own culpability is also irrelevant. Panelists have generally found that a domain name registrant will be responsible for content appearing on a website at its domain name, even if the registrant does not exercise direct control over that content. The Overview of WIPO Panel Views on Selected UDRP Questions states:
To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks.
(see http://www.wipo.int/amc/en/domains/search/overview2.0/#38)
There is no evidence before Panel that Respondent showed any good faith effort to avoid such advertising. On the contrary, Respondent seemed over a long period indifferent to such matters. Indeed, on Respondent’s own evidence, some years ago a company officer of Complainant approached Respondent with a view to purchase of the domain name and it would appear that even that overture did not prompt a review of how the domain name was being used.
The only issue which deserves some further attention is the requirement that the actions be taken “for commercial gain”. Respondent goes to some trouble to provide evidence that its actions have not resulted in monetary gain, a narrower category of reward it should be observed. Respondent submits that it “clearly has not benefited commercially or otherwise from any advertisements shown on <southpaw.com> and therefore the Panel should find, on this basis alone, that Respondent has not used <southpaw.com> in bad faith and indeed should rule in favor of the Respondent.”
The words, “for commercial gain”, have been understood broadly. Non-fiscal reward is included, as is the potential for future reward. Further, Respondent may gain through any conduct that, because it harms Complainant, eventually benefits Respondent. In that regard, panels often cite a complainant's loss in addition to a respondent's gain, finding it significant that while Internet users may become aware that the website they reached was not the (complainant's) website they were looking for, they may be satisfied with the content or services of the website they reached and may then abandon efforts to locate the original site, thereby indirectly causing Complainant commercial harm.
Moreover, Panel returns to the unconvincing explanation as to why the domain name was registered to “HB”, letters which do not correspond with the name of the individual alleged to control the domain name, still less with the name of the wig company that individual is said to own. The material provided to show that there was no commercial gain has almost no connectivity with the named Respondent and can be given little weight by Panel.
Panel finds that Complainant has established this third aspect of the Policy.
Laches
Respondent points out that the domain name has been registered since 1995 and states that Complainant, without explanation, has waited until 2014 to bring these proceedings.
Respondent relies on the case of Bd. of Trs. of the Univ. of Arkansas v. FanMail.com, LLC, Case No. D2009-1139 (WIPO November 2, 2009) where it is said that the complainant waited 14 years before bringing an UDRP proceeding. The panel held that, “the inordinate delays on the part of Complainant in bringing the Complaint must have seen to the objective observer to add successive years of legitimacy to the use Respondent was making of the Domain Name and legitimacy acquiesced in by Complainant.”
Here, Panel does not find disentitling conduct of any kind. Respondent purchased the domain name in 2002 and it is Respondent’s conduct which is relevant, not the years the domain name has been in existence. Still, as in the Board of Trustees case, 14 years has passed since then but here there has been no legitimate usage by Respondent - at best, passive holding of the domain; at worst (and, as found) use in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <southpaw.com> domain name be TRANSFERRED to Complainant.
Debrett G. Lyons, Panelist
Dated: August 3, 2014
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