MSI Holdings, LLC v. Seth Ward
Claim Number: FA1503001611872
Complainant is MSI Holdings, LLC (“Complainant”), represented by William S. Hilton of Pergament Gilman & Cepeda LLP, New Jersey, USA. Respondent is Seth Ward (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spexmachine.com>, registered with GANDI SAS.
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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2015; the Forum received payment on March 27, 2015.
On March 30, 2015, GANDI SAS confirmed by e-mail to the Forum that the <spexmachine.com> domain name is registered with GANDI SAS and that Respondent is the current registrant of the name. GANDI SAS has verified that Respondent is bound by the GANDI SAS 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 April 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2015 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 email@example.com. Also on April 1, 2015, 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 Response was received and determined to be complete on April 23, 2015, which is passed the deadline for this proceeding. The Response was thus determined deficient.
On April 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mr. Maninder Singh 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.
Complainant in its Complaint has made the following contentions:-
· Complainant in the complaint has stated that Complainant is the owner of United States Trademark Registration No. 1,312,902 for the mark SPEX, registered on January 8, 1985 and claiming a first use in commerce of January 1, 1954, for the goods “Inorganic Chemicals and Chemical Standards for General Industrial and Laboratory Use” in Class 1, and for “Measuring and Scientific Instruments-Namely, Spectrometers and Parts therefor, Spectrographs, Spectrophotometers, Phosphorimeters, Colorimeters, Monochromators, Spectrofluorometers and Parts therefor, Controllers and Parts therefor, and Microprocessor Data-Processors for Spectrometric Instrumentation; Laboratory Equipment-Namely, Presses and Grinders for Preparing Materials for Spectrometric Analysis” in Class 9.
· Complainant also claims to be owner of the following foreign registrations for the mark SPEX:
(i) SPEX – OHIM CTM No. 009709486, registered on July 12, 2011 (filed on February 3, 2011);
(ii) SPEX – OHIM CTM No. 009709502, registered on July 14, 2011 (filed on February 3, 2011);
(iii) SPEX – France Reg. No. 1,639,674, registered on January 18, 1991;
(iv) SPEX – Indian Reg. No. 1,425,575, having an application date of January 3, 2006;
(v) SPEX – Taiwan Reg. No. 00873320, registered on November 1, 1999 (filed on March 20, 1996);
(vi) SPEX – Korean Reg. Nos. 40-0363215 (earliest app. date of July 29, 1995) and 40-0383884 (earliest application date of July 29, 1995); and
(vii) SPEX – Japanese Reg. Nos. 4717925, registered on October 10, 2003 (app. date December 22, 2000 – priority to March 19, 1998) and 4448953, registered on January 26, 2001 (app. date of March 19, 1998).
· Complainant claims that these registrations outside of the U.S. secure and reinforce its rights for chemicals and chemical standards in Class 1 and laboratory and testing instruments and equipment in Class 9. It has also been claimed that these registrations also secure for Complainant rights for chemicals for analytical, testing and diagnostic purposes in Class 5 and for repair or maintenance of machines and apparatuses related to chemical processing, medical, measuring and testing, measuring and analysis, laboratories and other industrial fields in Class 37.
Contentions of Complainant regarding Identical and/or Confusingly Similar:
· The subject domain name is identical or confusingly similar to Complainant’s SPEX mark since the subject domain name incorporates the entirety of Complainant’s mark therein such that the subject domain is likely to be confused with Complainant’s mark.
· That the dominant element of the subject domain name is “spex”, being the identical mark of Complainant, and therefore bears an identical look, sound, and connotation to Complainant’s SPEX mark.
· That addition of letters or common, generic words, such as the “machine” in the subject domain, as well as, addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s SPEX mark to create the subject domain name does not render the subject domain name distinct over Complainant’s mark.
Contentions of Complainant regarding Rights or Legitimate Interests :
· Complainant has contended that Respondent does not use, has never used, and is not in preparation to use the subject domain name, or name corresponding to the subject domain, in connection with a bona fide offering of goods or services, nor in connection with a legitimate noncommercial or fair use of the subject domain name.
· That at or around the time Complainant sent its notice letter to Respondent on September 30, 2014, the subject domain name resolved to Respondent’s parked page which advertised the services of the Registrar, Gandi SAS. In this behalf, Complainant has relied upon Annexure – 10, appended to the complaint establishing this position. Complainant has contended that such use by Respondent does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the subject domain.
Contentions of Complainant regarding Registration and Use in Bad Faith :
· Complainant contends that Respondent acquired the subject domain name with actual and/or constructive knowledge, of Complainant’s SPEX mark.
· That Respondent acted in bad faith when Respondent added the word “machine” to Complainant’s SPEX mark to create a domain name suggesting a connection to Complainant and whereas Respondent has no connection with Complainant whatsoever.
Respondent in his response dated April 21, 2015 stated the following : -
· With regard to Complaint’s contentions on Identical and/or Confusingly Similar, Respondent has stated that the domain is ‘spexmachine’, not just ‘spex’. It has nothing to do with any of the categories in which Complainant has registered trademarks. Respondent states that it is simply a play on the common phrase ‘sex machine’. Respondent has further stated that the word ‘spex’ in many countries is widely accepted as a slang / short-hand term for ‘spectacles’.
· Respondent has submitted that Complainant’s trademarks cannot prevent use of a commonly accepted word, especially when used outside of Complainant’s trademarked categories and that there is little chance that anyone coming across the domain name or brand would not realize that this was both a play on words of ‘sex machine’. They would also likely assume and realize it was a spectacles store, even before viewing the content of the site, which would confirm this. There are many other spectacles stores in the UK and globally using ‘spex’ within their brand names and domain names, proving how widespread this usage is. Spex Opticians, Dead Men’s Spex, I Need Spex, Mister Spex, Spex 4 Less. The list goes on.
· Respondent claims to have registered the company – Spex Machine Limited – in the UK and thus, submits to have a clear intent to trade under this name.
· With regard to Complainant’s contentions on rights or legitimate interests in the disputed domain name, Respondent has attached/reproduced some screenshots of conversations between his partner and her auntie based in China who is the supplier of the spectacle frames which they are planning to sell. Respondent submits that the conversation started in January 2014 when they visited her shop and factory in Shenzhen, China. Respondent has reproduced one of such conversations of March 2014.
· Respondent has reproduced certain pictures of frames and glasses and has submitted that they have a plan to sell the same. The domain name was registered in connection with a bona fide offering of goods and services.
· With regard to Complainant’s contentions on bad faith registration and use, Respondent has stated that they have no interest in gaining traffic from anyone looking for the light based machines who might be clients or potential clients of Complainant and that Respondent wishes to sell spectacles using a commonly used term (‘spex’).
· The Panel observes that Complainant is the owner of United States Trademark Registration No. 1,312,902 for the mark SPEX, registered on January 8, 1985 and it is owner of various foreign registrations for the mark SPEX, as listed above.
· The Panel also finds that Complainant is also the registrant of a number of domains featuring their famous SPEX mark. Some of these domains, previously registered by a different entity, stated to have been obtained by Complainant through Complainant’s enforcement of its rights in its famous SPEX mark. The transferred domains include, among others, spexfix.com, sellspex.com, buyspex.com, spex-ray.com, spexspex.com, and an almost identical domain, which is the subject of this proceeding, spexmachinery.com.
· The Panel finds that the use of the domain name <spexmachine.com> by Respondent is in bad faith and Respondent has no rights or legitimate interests in relation to the domain name.
· The Panel also finds that the domain name <spexmachine.com> deserves to be transferred to Complainant and Respondent is not entitled to use this domain name. The Complaint deserves to be allowed forthwith and the Panel decides accordingly. However, in terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under.
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.
· The Panel observes that Complainant is the owner of United States Trademark Registration No. 1,312,902 for the mark SPEX, registered on January 8, 1985 and claiming a first use in commerce of January 1, 1954, for the goods “Inorganic Chemicals and Chemical Standards for General Industrial and Laboratory Use” in Class 1, and for “Measuring and Scientific Instruments-Namely, Spectrometers and Parts therefor, Spectrographs, Spectrophotometers, Phosphorimeters, etc. in Class 9 (Annex. 1 & 2) and that Complainant is owner of various foreign registrations for the mark SPEX (Annex. 2 to 9).
· The Panel notes that Complainant claims that Respondent’s disputed domain name <spexmachine.com> is identical and confusingly similar to Complainant’s mark SPEX as it fully incorporates its SPEX mark while adding generic word “machine”. The Panel also notes that the disputed domain name also adds the generic top-level domain (“gTLD”) “.com.” and that the word “machine” has connotation to Complainant’s goods, which include machines that prepare samples of materials and measure their physical and chemical qualities.
· In this regard, the Panel finds the following decisions of this Forum to be relevant:-
(i) MSI Holdings, LLC v. Kobhi N/SpexFix, FA 16000007 (Nat. Arb. Forum Feb. 13, 2015) - holding that the use of generic terms in a domain that completely encompasses a complainant’s mark helps establish confusing similarity;
(ii) Google Inv. v. Babaian, FA 1060992 (Nat. Arb. Forum Oct. 1, 2007) –holding that where the registrant added “generic words [like] ‘web,’ ‘date,’ ‘drive,’ and ‘storage’ that have an obvious relationship to Complainant’s business,” the domain names are confusingly similar with Complainant’s mark;
(iii) Discovery Communications, LLC v. Tripp Wood, FA 1299987 (Nat. Arb. Forum Feb. 19, 2010) - holding that the addition of the generic term “audio”, which “has an obvious relationship to Complainant’s offering of various products in the audio and audio-related industry”, in the disputed domain name further added to the likelihood of confusion with Complainant’s mark);
(iv) Vance Int’l., Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) - finding that, by adding the term “security”, which described the complainant’s business, to the complainant’s mark, the respondent “very significantly increased” the likelihood of confusion;
(v) MSI Holdings, LLC v. GBHost (Pushpendra Jaimini)/Pushpendra Jaimini, FA 1495040 (NAF June 13, 2013) - holding that “the adjunction of a generic term such as “test” is insufficient to differentiate a disputed domain name from a given mark;
(vi) Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) - finding that Respondent adding letters to words to create a domain name does not create a distinct mark but instead renders the domain name confusingly similar to Complainant’s mark.
· The contention of Respondent that ‘spexmachine’ is simply a play on the common phrase ‘sex machine’ is without any merit and deserves to be rejected. Respondent’s further submission that Complainant’s trademarks cannot prevent use of a commonly accepted word, also deserves rejection in view of Complainant’s submission that the USPTO and other foreign trademark agencies have granted registrations for Complainant’s SPEX mark. The Panel in this regard relies upon the decision in Vance Int’l., Inc. v. Abend, FA 970871 - holding that respondent’s argument that complainant’s mark was too generic to receive protection was belied by the fact that the USPTO granted trademark registration.
· The Panel finds that the <spexmachine.com> domain name is confusingly similar to Complainant’s SPEX mark under Policy 4(a)(i).
· The Panel observes that 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.
· The Panel has observed Complainant’s contention that close to the time this complaint was filed, the subject domain name resolved to Respondent’s parked page advertising the services of the registrar, Gandi SAS (Annex. 10). The Panel finds merit in Complainant’s contention that such use by Respondent does not amount to an offering of bona fide goods or services, or a legitimate noncommercial or fair use of the subject domain. The Panel in this regard relies upon the decision in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) holding that “Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” The Panel also relies upon decision in WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) - finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral or click-through fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy.
· It has been the contention of Complainant that before the service of notice by Complainant, the parked webpage was in the form and shape of Annexure – 10, the printout whereof is annexed to the complaint. It appears it is only thereafter that Respondent has attempted to show some use of the parked webpage and had made certain additions. This would also demonstrate absence of a bona fide offering of goods and services on the part of Respondent.
· The contention of Complainant that it has registration of the trade mark with the USPTO is not disputed. This claim is correct. Respondent has no rights in the SPEX mark because Complainant has not licensed or otherwise permitted Respondent to use Complainant’s famous SPEX mark in any manner, including not in any domain name, Respondent’s use of Complainant’s famous SPEX mark undermines any claim to a legitimate interest. Household Int’l., Inc. v. Cyntom Enterprises, FA 95784 (Nat. Arb. Forum Nov. 7, 2000) finding that use of someone else’s well known business name undermines any claims to a legitimate interest. As such, the Panel finds that there is substance in the contentions raised by Complainant that Respondent does not have any rights or legitimate interests in the <spexmachine.com> domain name.
· Complainant is also right in contending that Respondent is not commonly known by the disputed domain name. The Panel observes that the WHOIS record for the disputed domain name lists “Seth Ward” as the domain name registrant. The Panel in this regard find it useful to refer to decision in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) - concluding that the respondent was not commonly known by the disputed domain name(s) where the WHOIS information, as well as the other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its mark.
· The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii).
· Complainant contends that Respondent registered and is using the <spexmachine.com> domain name in bad faith and that Respondent acquired the subject domain name with actual and/or constructive knowledge of Complainant’s SPEX mark.
· Complainant claims that Respondent had notice of this dispute years before creating the subject domain name on January 26, 2014. The Panel observes that the filing date i.e., the February 3, 2011 of Complainant’s application that matured into Complainant’s E.U. SPEX registration and the earlier filing/priority dates of the other foreign and U.S. SPEX registrations; far predate the January 26, 2014 registration date of Respondent’s domain name at issue. The Panel in this regard relies upon decision in
(i) Vance Int’l, Inc. v. Abend, FA 970871 - holding that acquisition of a disputed domain name with actual and/or constructive knowledge of the complainant’s mark is evidence of bad faith registration and use;
(ii) State Farm Mut. Auto. Ins. Co. v. America’s Mortgage Center, FA 960208 (Nat. Arb. Forum May 23, 2007) holding that “Registration of confusingly similar domain names despite such constructive knowledge is, without more, evidence of bad faith registration and use…”;
(iii) Digi Int’l Inc. v. DDI Systems, FA 124506 (Nat. Arb. Forum Oct. 24, 2002) finding “There is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively”);
(iv) The True Value Co. v. Steven Loosle, FA 915373 (Nat. Arb. Forum Mar. 26, 2007) (citing Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135 at 1148 (9th Cir. Feb. 11, 2002) for the proposition that “[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.”
· The Panel finds merit in Complainant’s contention that Respondent was acting in bad faith when Respondent added the word “machine” to Complainant’s SPEX mark to create a domain name suggesting a connection to Complainant, and when Respondent registered the domain name even though Respondent has no connection with Complainant whatsoever. The Panel relies upon the following decisions:-
(i) Bergdorf Goodman, Inc. & NM Nevada Trust v. Edwyn Huang, FA 1286505 (Nat. Arb. Forum Nov. 4, 2009) holding that “the registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner suggests bad faith.”;
(ii) Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) holding that “The Domain Name is so obviously connected with the complainant and its services that its very use by someone with no connection with the complainant suggests opportunistic bad faith”;
(iii) MSI Holdings, LLC v. Kobhi N/SpexFix, FA1600007 holding that, in view of Respondent’s constructive notice of Complainant’s mark for approximately 30 years, “it is inconceivable that Respondent … could innocently affix a suffix of “fix” to an otherwise famous mark in good faith”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spexmachine.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: May 10, 2015
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