SPOTME Holding SA v. Domains By Proxy, LLC
Claim Number: FA1711001757590
Complainant: SPOTME Holding SA of Lausanne, Switzerland.
Complainant Representative:
Complainant Representative: euromaier - Industrieberatung Maier AG of Sissach, Switzerland.
Respondent: Domains By Proxy, LLC of Scottsdale, Arizona, US.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: Corn Willow, LLC; DotSpace Inc.; DotWebsite Inc.; Extra Madison, LLC; Personals TLD Inc.; Tin Mill, LLC
Registrars: GoDaddy.com, LLC
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Examiner in this proceeding.
Luz Helena Villamil-Jimenez, as Examiner.
Complainant submitted: November 8, 2017
Commencement: November 8, 2017
Default Date: November 27, 2017
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The case at hand refers to the domain names <spotme.center><spotme.directory> <spotme.space><spotme.tech><spotme.tips><spotme.website> registered through a privacy proxy service, who confirmed that the registrant of all these domains is the same. Complainant asserts that the domain names are identical to the trademark SPOTME registered in the United States, and the Registrant has no link with the Complainant.
Moreover, the Complainant states that after the Registration of the domain "spotme.pro" in July 2017 he sent a letter to the Registrant warning him and asking the domain to be transferred to him. The Registrant requested proof of ownership of the trademark, which was provided to him, but in the end the Registrant refused to hand over not only the domain "spotme.pro", but any other domains to the Complainant.
It is claimed in the Complaint that the Registrant prevents the Complainant from reflecting his mark in the corresponding Domain names while not using these Domains himself since they are blank. He adds that the registrant registered these domains with a privacy Proxy Service, which strongly indicates bad faith. The Registrant has engaged in a pattern of such a conduct since he registered several Domains "spotme" simultaneously or in a very short time.
Lastly, the Complainant contends that by registering a series of 6 Domains with a Name identical to the complainant's Trademarks, the Registrant attempts to attract Internet users to Registrant's web site by creating a likelihood of confusion with the complainant's mark as to the source of Registrant's Website.
In accordance with the provisions of URS, Complainant claims
(i) that the domain names <spotme.center><spotme.directory><spotme.space> <spotme.tech><spotme.tips><spotme.website> are identical to a word mark for which the Complainant holds valid domestic and international registrations and that is in current use;
(ii) that the Registrant has legitimate rights or interest to the domain names, and
(iii) that the domain names were registered and are being used in bad faith.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant
Complainant submitted evidence to demonstrate that it is the owner of the trademark SPOTME, and that said trademark is in use. Products and services are advertised under the trademark SPOTME on its website www.spotme.com.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Examiner concurs with the Complainant in that the disputed domain names
<spotme.center><spotme.directory><spotme.space><spotme.tech><spotme.tips><spotme.website> identically reproduce the registered trademark SPOTME.
Respondent has defaulted, and therefore there is no evidence to establish any rights or legitimate interests in respect of the domain names in his favor. In fact, the Examiner considers that the response given to the Complainant by the Respondent after he was warned about the domain spotme.pro, stating that he would not transfer the domain spotme.pro nor any other domain, is evidence of anything but a legitimate right or interest to the domain names subject of the present dispute.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith:
a. Registrant 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
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
In the present case, the disputed domain names <spotme.center><spotme.directory>
<spotme.space><spotme.tech><spotme.tips><spotme.website> happen to reproduce in an identical fashion the registered trademark SPOTME property of the Complainant. The inclusion of a distinctive trademark on a domain name is definitely not the result of casualty, and aside of making evident that the registrant is acting in bad faith, it does suggest an intention to mislead those who have access to the domain names by leading them to believe that said domains also belong to the owner of the registered trademark. Moreover, in the present case the Examiner agrees with the Complainant in that when registering the domains, the Respondent’s intention was to create a likelihood of confusion with the complainant's mark.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; in light of this, the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
Luz Helena Villamil Jimenez, Examiner
Dated: November 27, 2017
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