TechSmith Corporation v. vildan erdogan
Claim Number: FA1808001803825
Complainant is TechSmith Corporation ("Complainant"), represented by James R. Duby of DUBY LAW FIRM, Michigan, USA. Respondent is vildan erdogan ("Respondent"), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <techsmithscreencast.com>, registered with NameSilo, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 28, 2018; the Forum received payment on August 28, 2018.
On August 29, 2018, NameSilo, LLC confirmed by email to the Forum that the <techsmithscreencast.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 August 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@techsmithscreencast.com. Also on August 31, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 September 24, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
A. Complainant
Complainant owns trademark registrations for TECHSMITH in the United States, the European Union, and elsewhere, having used the mark in connection with various computer-related services since 1991. Complainant also owns a U.S. registration for SCREENCAST.COM, which it has used since 2006 for web-based media sharing services. Complainant applied for an EU registration for TECHSMITH SCREENCAST in the form of a figurative mark on January 30, 2018; the mark was registered on June 14, 2018.
Respondent registered the disputed domain name <techsmithscreencast.com> through a privacy registration service on January 30, 2018. The domain name resolves to a page that states ““techsmithscreencast.com is for sale! Buy now for $950.” Complainant states that it has not licensed its marks for use in domain names and that Respondent is not commonly known by the disputed domain name.
Complainant contends on the above grounds that the disputed domain name <techsmithscreencast.com> is identical or confusingly similar to its TECHSMITH, SCREENCAST.COM, and TECHSMITH SCREENCAST marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical or confusingly similar to marks in which Complainant has rights; that Respondent lacks rights and legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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(f), 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 (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.").
The disputed domain name <techsmithscreencast.com> incorporates Complainant's registered TECHSMITH, SCREENCAST.COM, and TECHSMITH SCREENCAST trademarks, combining the first two and adding the “.com” top-level domain to the third. These alterations and additions are insufficient to distinguish the domain name from Complainant's marks for purposes of the Policy. See, e.g., Toronto-Dominion Bank v. Prudhvi Raj, FA 1769721 (Forum Feb. 22, 2018) (finding <tdeasyweb.org> identical or confusingly similar to complainant’s TD and EASYBANK marks); World Wrestling Entertainment, Inc. v. Irfan Ali, FA 1623202 (Forum July 9, 2015) (finding <rawandsmackdown.com> confusingly similar to complainant’s RAW and SMACKDOWN marks). Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant's registered marks.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered marks without authorization, and it is being used for the sole apparent purpose of advertising the domain name for sale. Such use is unlikely to give rise to rights or legitimate interests under the Policy. See, e.g., Maruha Nichiro Corp. c/o Shigeru Ito v. Wang XiaoWen, FA 1715376 (Forum Mar. 14, 2017) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The factors set forth in paragraph 4(b) are not exhaustive; the totality of the circumstances must be considered in the assessment of bad faith, and the timing of the registration in particular may be such as to support an inference of bad faith intent. See, e.g., Future Festivals, LLC v. John Needham / BigStub, Inc., FA 1691404 (Forum Oct. 1, 2016) (finding bad faith where <deserttripfestivaltickets.net> was registered on the same day that complainant announced its Desert Trip Music Festival); Disney Enterprises, Inc. & ESPN, Inc. v. Josh Agho, FA 1373551 (Forum Mar. 22, 2011) (finding bad faith where <disneydigitalbook.com> was registered on the same day that complainant announced its launch of a website at <disneydigitalbooks.com>).
Respondent registered a domain name combining two of Complainant’s marks without authorization. The domain name also corresponds to a mark for which Complainant had submitted a trademark application on the very same day. The domain name was registered through a privacy service, and its sole apparent use has been to advertise the domain name itself for sale. Under the circumstances, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <techsmithscreencast.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: September 25, 2018
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