Audacious Studios, LLC dba Sitewire v. JOSEPH NACCARATO / SITEWIRED WEB SOLUTIONS
Claim Number: FA1710001753504
Complainant is Audacious Studios, LLC dba Sitewire (“Complainant”), represented by Sharon Toerek of Toerek Co. LPA, Ohio, USA. Respondent is JOSEPH NACCARATO / SITEWIRED WEB SOLUTIONS (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sitewired.com> and <sitewired.net>, registered with Enom, Inc.
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.
Sebastian M W Hughes as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 12, 2017; the Forum received payment on October 27, 2017.
On October 12, 2017; Oct 30, 2017, Enom, Inc. confirmed by e-mail to the Forum that the <sitewired.com> and <sitewired.net> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 2017 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@sitewired.com, postmaster@sitewired.net. Also on November 1, 2017, 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 November 21, 2017.
On November 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sebastian M W Hughes as Panelist.
An additional submission by Complainant was filed on November 28, 2017.
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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a company based in Tempe, Arizona and a provider of digital marketing, advertising and website development services in the USA, nationwide, under the word and figurative device trademarks SITEWIRE (the “Trademark(s)”). Complainant is the owner of US federal registration No. 4,562,416 for the word version of the Trademark and US federal registration No. 4,582,684 for the figurative version of the Trademark. The date of first use in commerce for both of these registrations is February 5, 1999.
Complainant put the now-registered Trademarks in commercial use on February 5, 1999, and registered the domain name <sitewire.com> on June 24, 2001, respectively six and four years earlier than Respondent registered the domain name <sitewired.com> (registered July 25, 2005) and respectively eight and six years earlier than Respondent registered the domain name <sitewired.net> (registered January 1, 2007).
Before Respondent made any preparations to begin operating a website at the disputed domain names, he was, or should have been, on notice of a potentially conflicting prior use. Registration of the domain names despite constructive notice of the preexisting conflicting websites and Trademarks with substantial goodwill accrued can lead one to believe that Respondent’s subsequent
domain name registrations were done intentionally to drive commercial traffic to the websites by creating a likelihood of confusion with Complainant’s Trademarks.
Complainant sent a cease and desist letter via its attorney to Respondent on
September 30, 2016, demanding that Respondent implement a transition plan to cease use of the “Sitewired” name in connection with its services, and setting a deadline for such cessation on November 1, 2016. At this point, Respondent was placed on actual notice of conflicting use between its domain names and the Complainant’s website as well as common law and federal trademarks, and the resulting likelihood of confusion. When Respondent failed to cease use of its “Sitewired” name by the asserted deadline, its continued use was in bad faith.
B. Respondent
Respondent is a company based in Denver, Colorado and a provider of web design, web hosting and online marketing services which target the Denver metro area. Respondent is a continuation of a former freelance web design business, “sitewired.net” that began operating in approximately 2007.
At the time the principal of Respondent obtained the domain name <sitewired.net>, in 2007, he was completely unaware of Complainant, its Trademarks (for which the applications were not filed until 2013), or its domain name <sitewire.com>.
In 2012, a third party offered and sold the complementary domain name <sitewired.com> to the principal of Respondent.
Complainant did not file for the registration of its Trademarks until May
2013. As a result, Respondent could not have had constructive notice in 2007 or in 2012 because constructive notice began in 2013, upon the filing of the federal trademark applications.
Furthermore, even though Complainant alleges that it had common law trademarks beginning in 1999, the evidence suggests that Respondent was not using such common law marks in commerce or in interstate commerce throughout that period. Rather, Complainant abandoned a previous registration of the identical mark SITEWIRE as it failed to file a Section 8 Declaration of Continuous Use.
Respondent and its principal had no actual knowledge of Complainant, Complainant’s Trademarks, or the domain <sitewire.com> until September
2016, when Complainant’s attorneys contacted them.
No consumer confusion has ever arisen as a result of Complainant and Respondent allegedly using a similar mark and Complainant offers no evidence to the contrary.
C. Complainant’s Additional Submissions
Complainant:
- Obtained a US federal trademark registration for the mark SITEWIRE on November 7, 2000, citing a first use date of use of the mark in February 1999. That registration was cancelled in August 2007; however Complainant did not abandon use of the mark and the registration remained active for nearly seven years.
- Obtained a US federal trademark registration for the mark SITEWIRE MARKETSPACE SOLUTIONS on November 7, 2007, citing a first use date of the mark in February 1999. That registration was cancelled in August 2007; however Complainant did not abandon use of the mark and the registration remained active for nearly seven (7) years.
- Applied for a US federal trademark registration for the mark SITEWIRE in May 2013, which mark registered in July 2014. That registration remains active.
- Applied for a US federal trademark registration for the mark SITEWIRE & Design in May 2013, which mark registered in August 2014. That registration remains active.
Complainant’s two original trademark registrations were still active in January 2007 when Respondent originally registered the <sitewired.net> domain name at the alleged start of his/its business.
Respondent apparently failed to conduct any due diligence as to the availability of the disputed domain names. Respondent does not allege that he made any effort to research the US Patent & Trademark Office trademark database for potential conflicts, or to conduct any additional research regarding the names (such as internet search engine research), prior to adopting the <sitewired.net> domain name. Assuming, arguendo, that Respondent had conducted such research even prior to acquiring the <sitewired.com> domain, the existence of even cancelled trademark registrations constituted a reasonable basis for constructive notice of the existence of a trademark owned by another, and of the need for he/it to perform additional due diligence, therefore leading him/it to discover Complainant’s internet presence and continued use of its marks. A cancellation of a trademark registration does not necessarily mean abandonment of a trademark.
Complainant has not established all the elements entitling it to transfer of the domain names.
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 test under the first limb of paragraph 4(a) the Policy is a simple test, based upon a comparison between Complainant’s relevant Trademark(s) and the disputed domain names in question.
Both of the disputed domain names incorporate the entirety of Complainant’s Trademarks.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trademarks. Complainant has accordingly made out the first limb under paragraph 4(a) of the Policy.
The principal of Respondent has signed an unsworn declaration, under penalty of perjury, pursuant to 28 U.S.C. § 1746, deposing to the following facts:
- At the time he registered <sitewired.net> in 2007, and when he purchased <sitewired.com> in 2012, he was unaware of Complainant or of its Trademarks. He was not aware of Complainant until 2016 when Complainant’s attorneys sent the cease and desist letter. He specifically chose the name “sitewire,” instead of “sitewired” because “wired” has a different meaning than “wire” in Respondent’s industry.
- Respondent has never experienced or learned of any confusion between its domain names or services and Complainant’s services or Trademarks. No client or potential client has ever mistaken Respondent’s services for the services of Complainant.
- Respondent provides services mainly to the Denver metro area in Colorado. The header on Respondent’s website prominently displays the Denver skyline and announces “Denver Website Design.” Respondent’s largest customers are Colorado-based customers including the University of Denver.
The evidence before the Panel demonstrates that Respondent and its principal have been operating a legitimate web design, web hosting and online marketing business in the Denver, Colorado area under the disputed domain names since 2007.
Respondent’s principal has provided a declaration to the effect that he did not know of Complainant and of its Trademarks until receipt of Complainant’s cease and desist letter in September 2016.
In light of Respondent’s declaration, the Panel is unable to conclude, for the purposes of this UDRP proceeding, that Respondent had constructive notice of Complainant and of its Trademarks, whether on the basis of Complainant’s previous registrations for the Trademarks which were abandoned in 2007, or otherwise.
In all the circumstances, the Panel concludes that Respondent has rights and legitimate interests in the disputed domain names, by virtue of the business operated in the Denver, Colorado area by Respondent and its principal since 2007 under and by reference to the disputed domain names.
Accordingly, the second limb under paragraph 4(a) of the Policy has not been made out.
For the same reasons outlined above on the question of rights or legitimate interests, the Panel is unable to conclude that the disputed domain names were registered and are being used in bad faith.
Respondent operates predominantly in the Denver, Colorado metro area. Complainant is based in Tempe, Arizona and operates nationwide, but Complainant did not file for its currently registered federal registrations for the Trademarks until May 2013, six years after Respondent’s principal registered and commenced use of the disputed domain name <sitewired.net>, and over a year after Respondent’s principal purchased the disputed domain name <sitewired.com> from a third party.
Complainant’s previous registrations for the Trademark were abandoned in 2007. In all the circumstances, from the evidence before the Panel, it would appear Complainant may not have developed any substantial degree of goodwill in its Trademarks until after the disputed domain names were registered or obtained by Respondent. In any event, the Panel is bound to accept the declaration of Respondent’s principal as to his lack of knowledge of Complainant and of Complainant’s Trademarks until September 2016.
Furthermore, Complainant has not provided any evidence of actual consumer confusion in the Complainant and in Complainant’s additional submissions, despite this issue having been directly raised by Respondent in the Response.
The evidence before the Panel suggests that both parties have in fact been coexisting in the marketplace, without any consumer confusion. In all the circumstances, the Panel is unable to conclude that Respondent targeted Complainant and its Trademarks when Respondent’s principal registered the disputed domain names.
Accordingly, the third limb under paragraph 4(a) of the Policy has not been mad out.
Reverse Domain Name Hijacking (“RDNH”)
Paragraph 15(e) of the Rules provides as follows:
“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.”
RDNH is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
Although Respondent does not seek a finding of RDNH in this proceeding, UDRP panels have an absolute discretion under the Policy as to whether or not to make findings of RDNH.
It is trite that a complainant’s mere lack of success does not of itself suffice to establish RDNH. There must be compelling evidence to support the conclusion that Complainant knew it lacked relevant trade mark rights, knew Respondent had rights or legitimate interests, or knew there was a lack of bad faith on the part of Respondent; or otherwise that the proceeding has been brought to unreasonably harass Respondent. This is a high evidential burden.
In all the circumstances, and in particular in light of Complainant’s prior common law rights in the Trade Marks dating from February 1999, the Panel is unable to conclude that this is a case where Complainant in fact knew, or clearly should have known, at the time that it filed the Complaint that it could not prove each of the essential elements required by the Policy. The Panel is therefore unable to conclude that Complaint has engaged in RDNH.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sitewired.com> and <sitewired.net> domain names REMAIN WITH Respondent.
Sebastian M W Hughes, Panelist
Dated: November 30, 2017
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