Solium Capital ULC v. Jay White / JAY N SONS LLC
Claim Number: FA2205001995563
Complainant is Solium Capital ULC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Jay White / JAY N SONS LLC (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <execshareworks.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2022; the Forum received payment on May 9, 2022.
On May 9, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <execshareworks.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 May 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2022 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@execshareworks.com. Also on May 10, 2022, 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 June 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, Solium Capital ULC, is a New York-based company that provides human resources software as well as HR management and consulting services. Complainant claims rights in the trademark SHAREWORKS through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,480,604 registered Aug. 5, 2008, and Reg. No. 6,122,703 registered Aug. 11, 2020). The disputed domain name <execshareworks.com> registered on May 3, 2022, is identical or confusingly similar to the mark because it incorporates wholly Complainant’s SHAREWORKS mark, differing only through the addition of the generic phrase “exec” and the addition of the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <execshareworks.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SHAREWORKS mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services and it also does not make a legitimate noncommercial or fair use of the domain. The disputed domain name does not resolve to an active website.
Respondent registered and uses the <execshareworks.com> disputed domain name in bad faith. Respondent passively holds the disputed domain name and creates an initial interest confusion between Respondent’s domain and Complainant. Furthermore, Respondent had actual knowledge of Complainant’s rights in the SHAREWORKS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant owns rights in the trademark SHAREWORKS and the <execshareworks.com> domain name is confusingly similar to the mark;
- The disputed domain name does not resolve to any website content;
- Respondent lacks rights or legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name, it is not making a bona fide offering of goods or services, and it is not making a noncommercial legitimate or fair use thereof; and
- Respondent registered and uses the disputed domain name in bad faith through its passive holding of the domain and the causation of initial interest confusion.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Next, Complainant argues that Respondent’s <execshareworks.com> domain name is identical or confusingly similar to Complainant’s SHAREWORKS mark because it incorporates wholly Complainant’s mark and is merely preceded by the generic term “exec” and it also adds the “.com” gTLD. The addition of a generic or descriptive phrase and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Further, Complainant argues that “the term ‘exec’ – which is a common abbreviation for ‘executive’ – actually enhances the confusing similarity, as Complainant manages equity compensation plans for executives” as part of its human resources services. The Panel agrees. See, e.g., UBS AG v. William Ricaldo, FA 1891124 (Forum May 1, 2020) (“because the phrase ‘private client access’ is closely associated with Complainant’s business, its presence in the Domain Name [<ubsprivateclientsaccess.com>] exacerbates its confusing similarity” to Complainant’s UBS mark). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have 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”).
Complainant argues that Respondent lacks rights or legitimate interest in the <execshareworks.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the SHAREWORKS mark or register domain names using Complainant’s mark. In addition to any other submitted evidence, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information offered no indication that the respondent is commonly known by the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information associated with the <execshareworks.com> disputed domain does not indicate that respondent is known by the disputed domain name and the registrar verification email sent to the Forum names the owner as Jay White / JAY N SONS LLC. It is not disputed that Respondent was not given rights to use the SHAREWORKS mark and there is no evidence that it is commonly known by the disputed domain name. Therefore, the Panel does not find any grounds upon which to conclude that Respondent can demonstrate any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <execshareworks.com> domain name for any bona fide offering of goods or services and that it does not make any legitimate noncommercial or fair use thereof as the domain name resolves to an inactive page. Where a disputed domain name resolves to a blank webpage, panels have found that there is no bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Société Air France v. Gary Van Til, Response Science Ltd, D2017-0203 (WIPO Mar. 15, 2017) (no rights or legitimate interest found where “the websites to which the Disputed Domain Names resolve are blank.”); Victoria's Secret Stores Brand Management, Inc. v. Travis Martin c/o Dynadot Privacy, FA 1250363 (Forum Apr. 22, 2009) (“the failure of Respondent’s confusingly similar <victoriassecrret.com> domain name to resolve to any website is evidence that Respondent has not made a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Complainant has provided a screenshot of the disputed domain name’s resolving webpage which displays the message “This site can’t be reached”. As Respondent has not filed a Response nor made any other submission in this case, it does not dispute Complainant’s evidence. The Panel therefore finds that Complainant has made an unrebutted prima facie case and, by a preponderance of the presented evidence, that Respondent is not making a bona fide offering of goods or services under ¶ 4(c)(i) nor a legitimate noncommercial or fair use thereof under ¶ 4(c)(iii).
The Complaint asserts that Respondent had actual knowledge and constructive notice of Complainant’s rights in the SHAREWORKS mark at the time it registered the <execshareworks.com> domain name. UDRP case precedent typically declines to accept the legal theory of constructive notice. However, where both parties are located in a jurisdiction that applies such a law, including the United States of America, and the complainant has obtained a federal trademark registration predating the relevant domain name registration, panels have been prepared to accept the concept. See WIPO Overview 3.0, par. 3.2.2. Also Leite’s Culinaria, Inc. v. Gary Cieara, D2014-0041 (WIPO Feb. 25, 2014) (“under 15 USC §1072, registration of Complainant’s mark constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name.”) As both parties to this dispute are USA-based and the doctrine of constructive notice is recognized under USA law, the Panel finds it reasonable to apply the principle in this case. Complainant’s earliest USPTO registration of its SHAREWORKS mark issued on August 5, 2008, many years before Respondent’s registration of the disputed domain name in 2022.
Complainant further asserts that Respondent had actual knowledge of the SHAREWORKS mark prior to registering the disputed domain name based on the reputation of the mark. A respondent may be presumed to have knowledge of a mark that is well-known. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”) Complainant claims that there is “a long and well-established reputation in the SHAREWORKS marks through its exclusive use in the human resources services industry throughout the world”. In support of this assertion, Complainant submits a copy of its own www.shareworks.com website home page which lists, as one of Complainant’s clients, the investment firm of Morgan Stanley. This is a rather thin evidentiary record and Complainant could have done more to support its claims of worldwide use and reputation. However, Respondent has chosen not to participate in these proceedings and so, taking into account all of the circumstances of this case, including the fact that “shareworks” is not a dictionary or otherwise generic or descriptive term, the Panel finds it more likely than not that Respondent did have actual knowledge of Complainant’s right in its mark at the time that it registered the disputed domain name.
Furthermore, Complainant contends that Respondent’s <execshareworks.com> domain name resolves to an inactive website and has been passively held. The non-use of a disputed domain name may suggest bad faith under Policy ¶ 4(a)(iii) even though it is not specifically enumerated as an example under Policy ¶ 4(b). See Frank, Weinberg & Black P.L. v. Allison D’Andrea, D2013-1578 (WIPO Oct. 18, 2013) (“Paragraph 4(b)’s examples are expressly non-exclusive…”) See also Opportunity Financial, LLC v. Warut Chuaynoo, FA 1994278 (Forum June 2, 2022) (“Respondent’s failure to actively use the at-issue domain name shows bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). * * * Respondent’s passive holding of the at-issue domain name suggests Respondent’s present intent to capitalize on the confusion between the <opploansmyoffer.com> domain name and Complainant’s trademark at some time in the future.”) The Panel references the submitted screenshot of the web page to which the disputed domain name resolves as evidence of Respondent’s inactive holding. This states only “This site can’t be reached”. As Respondent has provided no alternative explanation for its actions, the Panel finds that the evidence in this case weighs in favor of finding bad faith under Policy ¶ 4(a)(iii).
Further, Complainant argues that Respondent registered and uses the <execshareworks.com> domain name in bad faith because Respondent disrupts Complainant’s business by creating initial interest confusion. Where the respondent uses a disputed domain name to create such confusion, the Panel may find evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Medline Industries, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1886034 (Forum Mar. 31, 2020) (“A respondent’s use of a disputed domain name to cause Internet users initial interest confusion as to affiliation with a complainant is evidence of bad faith pursuant to Policy ¶ 4(a)(iii) * * * Respondent’s use of the MEDLINE mark in its disputed domain name would lead Internet users to believe that Respondent is affiliated with Complainant, when it is not.”) As this assertion appears to be reasonable and has not been disputed by Respondent, the Panel finds that it lends further support to the conclusion that Respondent registered and used the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <execshareworks.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: June 16, 2022
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