Edward Platts v. Martin Schneider / SMW Co. S.A.
Claim Number: FA1411001589739
Complainant is Edward Platts (“Complainant”), represented by Frederick L. Tolhurst of Cohen & Grigsby, P.C., Pennsylvania, USA. Respondent is Martin Schneider / SMW Co. S.A. (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <precista.com>, registered with Key-Systems GmbH.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2014; the National Arbitration Forum received payment on November 12, 2014. The Complaint was received in both English and German.
On November 13, 2014, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <precista.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@precista.com. Also on November 21, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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.
A. Complainant’s Contentions
1. Policy ¶ 4(a)(i)
Complainant has sold watches under the PRECISTA mark since 2003. The mark is featured clearly on the products sold. See Compl., at Attach. 1, Exs. A–E. The PRECISTA mark has been registered with the likes of the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. , registered ) and the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. , registered ). The Policy does not require Complainant to necessarily have trademark registrations in the country where Respondent operates, when as here Complainant has shown more general rights to the trademark.
2. Complainant has made a continuous use of the mark since 2003, and sells the goods through the <timefactors.com> website. Complainant provides the Declaration of Edward Platts (the Complainant himself) and provides exhibits lettered A-E to show the extent of the use of its mark.
3. The <precista.com> domain name is identical to the PRECISTA mark because adding “.com” does not distinguish the domain name.
4. Policy ¶ 4(a)(ii)
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by this domain name and is not licensed to use PRECISTA. Respondent is one “Martin Schneider” a director of “M7 GmbH,” a Swiss business. Respondent was assigned the Swiss registration 609,564, registered December 21, 2010, on April 4, 2011. See Compl., at Attach. 12, p. 4.
5. Since 2011, Respondent has run his own competing business where he trades off the PRECISTA mark in his own way. Respondent himself acquired the disputed domain name in 2011. See Compl., at Attach. 5, pp. 30–32. Respondent’s attempts at trademark registration for PRECISTA in the United States were thwarted by Complainant’s successful effort to oppose Respondent’s registration. In supporting its finding the TTAB of the United States agreed that a likelihood of confusion existed between Respondent’s claimed mark and Complainant’s existing PRECISTA mark.
6. Policy ¶ 4(a)(iii)
Respondent has registered and is using the domain name in bad faith. Respondent lost the <precista.co.uk> domain name to Complainant during a 2011 UDRP proceeding through Nominet Dispute Resolution Services. See Attach. 4.
7. Respondent’s sale of watches under the PRECISTA mark is evidence of Respondent’s intent to profit from the likelihood Internet users might mistake the goods sold as being Complainant’s PRECISTA goods.
8. Further, Respondent was aware of Complainant’s rights in this mark based on the parties’ history along with the fact Respondent uses the arbitrary term “precista” to sell the same goods as those Complainant sells under the PRECISTA mark.
B. Respondent’s Contentions
1. Respondent did not submit a formal response. Respondent has sent an e-mail asking if the Panel had reached its decision. The Panel notes the <precista.com> domain name was registered October 20, 2000, with Respondent taking ownership around or about February 16, 2011. See Compl., at Attach. 5, p. 31.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in German, thereby making German the language of the proceedings.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
1. Respondent’s <precista.com> domain name is confusingly similar to Complainant’s PRECISTA mark.
2. Respondent does not have any rights or legitimate interests in the <precista.com> domain name.
3. Respondent registered or used the <precista.com> domain name in bad faith.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has sold watches under the PRECISTA mark since 2003. The mark is featured clearly on the products sold. See Compl., at Attach. 1, Exs. A–E. The PRECISTA mark has been registered with the likes of the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,479,533 registered Feb. 11, 2014, filed Mar. 29, 2011) and the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 2,344,060, registered Feb. 20, 2004, filed Sept. 23, 2003). Complainant argues that the Policy does not require Complainant to necessarily have trademark registrations in the country where Respondent operates, when as here Complainant has shown more general rights to the trademark. This Panel agrees that Complainant’s show of rights here satisfies Policy ¶ 4(a)(i)’s requirement of rights in a mark, regardless of Respondent’s Swiss domicile. See Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
Complainant has made a continuous use of the mark since 2003, and sells the goods through the <timefactors.com> website. Complainant provides the Declaration of Edward Platts (the Complainant himself) and provides exhibits lettered A-E to show the extent of the use of its mark. The Panel takes the evidence proffered as sufficient to show that consumers identify PRECISTA as a term used to identify the source of Complainant’s watches, and the Panel finds Policy ¶ 4(a)(i) rights by secondary meaning dating back to 2003. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
Complainant argues that the <precista.com> domain name is identical to the PRECISTA mark because adding “.com” does not distinguish the domain name. The Panel agrees the domain name is identical to Complainant’s mark because adding “.com” is not relevant under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the domain name. Complainant attests that Respondent is not commonly known by this domain name and is not licensed to use PRECISTA. Respondent is one “Martin Schneider”, a director of “M7 GmbH,” a Swiss business. Complainant notes that Respondent was assigned the Swiss registration 609,564, registered December 21, 2010, assigned April 4, 2011. See Compl., at Attach. 12, p. 4. This Panel agrees with Complainant that Respondent’s failure to respond and further embellish these facts suggests that Respondent is not known by the domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant also argues that since 2011, Respondent has run his own competing business where he trades off the PRECISTA mark in his own way. Complainant points out that Respondent himself acquired the disputed domain name in 2011. See Compl., at Attach. 5, pp. 30–32. Complainant suggests that Respondent’s attempts at trademark registration for PRECISTA in the United States were thwarted by Complainant’s successful effort to oppose Respondent’s registration. Complainant argues that in supporting its finding, the TTAB of the United States agreed that a likelihood of confusion existed between Respondent’s claimed mark and Complainant’s existing PRECISTA mark. Complainant surmises from all of this that Respondent’s continued use of this domain name to house a competing website and business is not bona fide. This Panel agrees that Respondent is merely trading off the PRECISTA mark and is running a competing business in furtherance of this scheme, and the Panel agrees Respondent has no Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, with regard to this domain name. See, e.g., Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant argues that Respondent has registered and is using the domain name in bad faith. Complainant notes that Respondent lost the <precista.co.uk> domain name to Complainant during a 2011 proceeding through Nominet Dispute Resolution Services. See Attach. 4. The Panel agrees that in Edward Platts t/a Timefactors v. Martin Schneider, D00010247 (Nominet Oct. 25, 2011) that panel held that the registration was “abusive” (“absusive” under that policy meaning that either (i) registered or otherwise acquired in a manner which took unfair advantage of the complainant’s rights, or (ii) has been used in a manner which has taken unfair advantage of complainant’s rights). This Panel agrees that there are distinct differences between “abusive” registrations under the Nominet rules and “bad faith” under the UDRP, and further that the UDRP requires bad faith use and registration in bad faith, whereas Nominet requires “abusive registration” through unfair registration or unfair use. As such, the Panel agrees the prior Nominet decision is not a sufficient basis for a finding of Policy ¶ 4(b)(ii) bad faith.
Complainant next argues that Respondent’s sale of watches under the PRECISTA mark is evidence of Respondent’s intent to profit from the likelihood Internet users might mistake the goods sold as being Complainant’s PRECISTA goods. The Panel again notes that the domain name is used to sell watches under the PRECISTA mark, without Complainant’s authorization. See Compl., at Attach. 5A., pg. 5. This Panel agrees that the use of this domain name for the sale of directly competing goods is a clear illustration of an intent to profit from the likelihood of Internet users’ confusion as to Complainant’s association with the website. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Complainant argues that Respondent was aware of Complainant’s rights in this mark based on the parties’ history along with the fact Respondent uses the arbitrary term “precista” to sell the same goods as those Complainant sells under the PRECISTA mark. This Panel agrees that Respondent has actual knowledge of Complainant’s rights prior to registering this domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <precista.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 31, 2014
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