Storage Performance Council v. Walter Baker / Gradient Systems, Inc.
Claim Number: FA1903001832826
Complainant is Storage Performance Council (“Complainant”), California, USA. Respondent is Walter Baker / Gradient Systems, Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <storageperformance.org>, registered with Tucows Domains 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2019; the Forum received payment on March 6, 2019.
On March 7, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <storageperformance.org> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 March 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2019 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@storageperformance.org. Also on March 15, 2019, 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 April 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is a registered 501(c)-6, non-profit organization. Its mission is to define, standardize, and promote vendor-neutral storage subsystem benchmarks, as well as to disseminate objective, verifiable performance data to the computer industry and its customers. Complainant has rights common law rights in the STORAGE PERFORMANCE COUNCIL, SPC BENCHMARK 1 and SPC BENCHMARK 2 marks. See Amend. Compl. Annex E. Respondent’s <storageperformance.org> domain name is identical or confusingly similar to Complainant’s mark as it is identical to the focus of Complainant.
Respondent has no rights or legitimate interests in the <storageperformance.org> domain name. Respondent is an independent contractor who was under contract with Complainant when it registered the domain name on Complainant’s behalf and in the name of Complainant as registrant. However, at the end of the contract, Respondent transferred the registrant of the domain name from Complainant to itself, Respondent. Subsequently, Respondent failed and refused to change the registrant from itself to Complainant despite being directed to do so. See Amend. Compl. Annex B. Thus, Respondent has no rights in the domain name.
Respondent registered and uses the <storageperformance.org> domain name in bad faith. Respondent did initially register the domain name properly on behalf of Complainant, however it subsequently failed to transfer the domain name to Complainant when the contract ended. See Amend. Compl. Annex B. Further, there is no active website associated with the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States registered 501(c)-6, non-profit organization working in the field of benchmarks in the computer industry.
2. Complainant has established its common law trademark rights in the STORAGE PERFORMANCE COUNCIL mark.
3. Respondent registered the <storageperformance.org> domain name on December 8, 1998.
4. Respondent has no entitlement to the disputed domain name and has failed and refused to transfer it to Complainant as it was obliged to do at the end of its contract with Complainant and being requested to do so.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it holds common law rights in the STORAGE PERFORMANCE COUNCIL, SPC BENCHMARK 1 and SPC BENCHMARK 2 marks and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration of a domain name if it can demonstrate established common law rights in the mark. See 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.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant argues that it has been the subject of worldwide publications in both print and digital format. Complainant also avers that it has consistently referred to these marks as trademarks, and added language covering the marks to Complainant’s Policies and Procedures in 2016. See Compl. Annex E. The Panel finds that Complainant does hold common law rights in the three marks for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to any and if so which of Complainant’s trademarks. Complainant argues that the domain name is identical to the focus of Complainant’s business. While Complainant does not make any specific arguments as to how the domain name is identical/confusingly similar to Complainant’s marks, the Panel notes that the domain name eliminates the last term from Complainant’s STORAGE PERFORMANCE COUNCIL mark and adds the “.org” generic top-level domain (“gTLD”). Eliminating a term from a complainant’s mark and adding a gTLD generally is insufficient to distinguish a domain name from a mark under the Policy. See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).). The Panel therefore finds that the <storageperformance.org> domain name is confusingly similar to the STORAGE PERFORMANCE COUNCIL mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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), then the burden shifts to Respondent to show it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s STORAGE PERFORMANCE COUNCIL trademark and to use it in its domain name, omitting the word “COUNCIL” that does not negate the confusing similarity with the trademark;
(b) Respondent registered the <storageperformance.org> domain name on December 8, 1998;
(c) Respondent has failed and refused to transfer the domain name to Complainant as it was obliged to do at the end of the contract it had with Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is an independent contractor who was under contract with Complainant when it registered the domain name on Complainant’s behalf and in Complainant’s name as registrant and that at the end of the contract on or about 21 January 2016 it changed the registration from Complainant to itself, Respondent. Since then, Respondent has failed and refused to transfer the registration of the domain name to Complainant despite being directed to do so. A respondent who registers a domain name on behalf of a complainant and subsequently fails to transfer the domain name to a complainant can be found to lack rights and legitimate interests in that domain name. See Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant); see also Dominic Vetere v. DAVE CARRIER / DC FINANCE INC, FA 1707259 (Forum Jan. 24, 2017) (holding that “former employees of a company no longer hold any rights or legitimate interests in the company’s mark”). Complainant provides a timeline of events and supporting emails between Complainant and Respondent to show that Respondent registered the domain name on behalf of Complainant and subsequently in its own name. See Amend. Compl. Annex B. Accordingly, the Panel finds that Respondent registered the <storageperformance.org> domain name on behalf of Complainant.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel will consider Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant argues that Respondent is an independent contractor who was under contract with Complainant when it registered the domain name on Complainant’s behalf and in Complainant’s name as registrant and that at the end of the contract on or about 21 January 2016 it changed the registration from Complainant to itself, Respondent. Since then, Respondent has failed and refused to transfer the registration of the domain name to Complainant despite being directed to do so. A respondent who registers a domain name on behalf of a complainant and subsequently fails to relinquish registration rights in the domain name can be found to have acted in bad faith under the Policy. See Anbex Inc. v. WEB-Comm Techs. Group, FA 780236 (Forum Sept. 19, 2006) (finding bad faith registration and use where the complainant hired the respondent to register the disputed domain name and the respondent later re-registered the disputed domain name on its own behalf and refused to transfer it to the complainant once their business relationship ended); see also Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (“the nature of the method by which Respondent acquired the disputed domain name registrations (effectively hijacking Complainant’s previous registration of the domain names) evidences bad faith use and registration of those domain names.”). As noted above, Complainant provides a timeline of events and supporting emails between Complainant and Respondent to show that Respondent registered the domain name on behalf of Complainant and in Complainant’s name as registrant and that it subsequently changed the registration form Complainant to itself, Respondent. See Amend. Compl. Annex B. Accordingly, the Panel finds that Respondent registered the <storageperformance.org> domain name on behalf of Complainant and was acting in bad faith when it changed the registration from Complainant to Respondent and subsequently failed and refused to change the registration from itself to Complainant despite being directed to do so.
Secondly, Complainant argues that there is no active website associated with the <storageperformance.org> domain name. Inactively holding a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As the Panel accepts Complainant’s submission, the Panel agrees that Respondent’s failure to use the domain name demonstrates Respondent’s bad faith under the Policy.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the STORAGE PERFORMANCE COUNCIL mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <storageperformance.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 6, 2019
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