The Settlement Alliance v. JACK JIOS
Claim Number: FA1806001792029
Complainant is The Settlement Alliance (“Complainant”), represented by Steven L. Rinehart of Registered Patent Attorney, Utah, USA. Respondent is JACK JIOS (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <settlement-aliance.com>, registered with FastDomain Inc.
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 Forum electronically on June 15, 2018; the Forum received payment on June 15, 2018.
On July 11, 2018, FastDomain Inc. confirmed by e-mail to the Forum that the <settlement-aliance.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 July 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2018 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 firstname.lastname@example.org. Also on July 13, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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.
Complainant asserts common law trademark rights in SETTLEMENT ALLIANCE and submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the domain name; and the domain name has not been used other than for a nefarious purpose.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant’s business.
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the SETTLEMENT ALLIANCE name in connection with its business offering settlement planning services;
2. the disputed domain name was registered on May 23, 2018; and
3. the domain name has been used to generate fraudulent emails which pose as having originated from Complainant.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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.
The Policy does not distinguish between registered and unregistered trademark rights. Complainant provides no evidence of a trademark registration and so it must prove that it has rights in the expression SETTLEMENT ALLIANCE as an unregistered or so-called common law trademark.[i]
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview”)[ii], asks at paragraph 1.3: “What does a complainant need to show to successfully assert unregistered or common law trademark rights?” The consensus viewpoint of panelists includes the following statement:
“Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
The WIPO Overview goes on to explain that proof of common law rights generally requires evidence of public use and recognition of the putative trademark. Albeit that the evidence might have been better assembled and presented, the Panel notes that the Complaint includes material showing that Complainant’s business was founded in Texas in 2014 and has used and promoted the name SETTLEMENT ALLIANCE in connection with its afore-described services through print advertising in bar journals, affiliate advertising, its website active since 2014, and banner advertising.
There is no absolute requirement for Complainant to have a USA-wide reputation and the Panel finds that Complainant has done just enough to show a right to SETTLEMENT ALLIANCE as a common law trademark in at least part of the United States.
Further, the Panel finds that the domain name is confusingly similar to the common law trademark. The domain name wholly incorporates the trademark and makes trivial additions and omissions, adding a hyphen and the gTLD “.com.”, and removing one letter “l” from the word “alliance”.[iii]
Panel therefore finds that 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
(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.[iv]
The publicly available WhoIs information lists “Jack Jios” as the domain name registrant and so there is no evidence that Respondent might be commonly known by the domain name. Complainant states that there is no association between the parties. There is no evidence that Respondent has any trademark rights. The disputed domain name has, as described earlier, been used in bad faith to disrupt Complainant’s business under the trademark. In particular, there is evidence that an email connected with the domain name and using the personal name of an employee of Complainant has been sent to a third party with the intention of fraudulently obtaining money or sensitive information from that third party.
A prima facie case has been made out[v] and the onus shifts to Respondent. In the absence of a Response that onus is not met and the Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and 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.’
Whilst a respectable argument can be made for the application of paragraph 4(b)(iv) above, the Panel finds, as separate matters, registration in bad faith and use in bad faith. The described use of the disputed domain name is clearly in bad faith. Moreover, the bad faith action is evidence in this case that Respondent targeted Complainant and its trademark at the time of registration of the domain name and so registered the domain name in bad faith.[vi] The Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <settlement-aliance.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: August 20, 2018
[i] See, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”
[ii] See http://www.wipo.int/amc/en/domains/search/overview3.0
[iii] See, for example, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) where the panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii); see also Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016); Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016).
[vi] See, for example, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name; Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) “Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
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