Symetri AB v. Joshua Marcum
Claim Number: FA2302002030285
Complainant is Symetri AB (“Complainant”), represented by Magnus Henning of Groth & Co, Sweden. Respondent is Joshua Marcum (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <symetri.us>, registered with Sav.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to Forum electronically on February 2, 2023; Forum received payment on February 2, 2023.
On February 2, 2023, Sav.com, LLC confirmed via an e-mail message addressed to Forum that the <symetri.us> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2023, 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@symetri.us. Also on February 2, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, 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, founded in Sweden in 1989, creates, markets and provides, among other things, data communications, software development and related services from offices in six European countries and the United States.
Complainant holds a registration for the trademark SYMETRI, which is on file with the European Union Intellectual Property Office (“EUIPO”) as Registry No. 013483243, registered April 6, 2015.
Since 2014 Complainant has done business on the Internet via its domain names <symetri.se> and <symetri.com>.
Respondent registered the domain name <symetri.us> on March 28, 2021.
The domain name is substantively identical and confusingly similar to Complainant’s SYMETRI mark.
Respondent does not hold a trademark that is identical to the domain name.
Respondent has never used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
Respondent has not been commonly known by the domain name.
On March 1, 2022, Complainant announced to the media that it would soon expand its business into the United States.
Shortly thereafter Respondent activated a website resolving from the domain name which website features “adult” content.
Respondent has demanded “a 5 figure offer” to transfer the domain name to Complainant.
Respondent’s use of the domain name does not constitute a legitimate noncommercial or fair use.
Respondent knew of Complainant and its rights in the SYMETRI mark when it registered the domain name.
Respondent has both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
By reason of its registration of the SYMETRI trademark with an international trademark authority, the European Union Intellectual Property Office (“EUIPO”), Complainant has shown that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) :
Registration of a mark with the EUIPO, a government agency, sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <symetri.us> domain name is both substantively identical and confusingly similar to Complainant’s SYMETRI mark. The domain name incorporates the mark in its entirety, with only the addition of the country code Top Level Domain (“ccTLD”) “.us.” Many panels have found that the addition of a ccTLD or other TLD to the mark of another in forming a domain name is irrelevant in determining the question of identity or confusing similarity under Policy ¶ 4(a)(i). See, for example, Blue Cross and Blue Shield Assoc. v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018):
A TLD (whether a gTLD, … or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.
See also MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin, FA 1621184 (Forum July 8, 2015):
In light of the fact that Respondent’s disputed domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us,” the Panel here finds that the disputed domain name is identical to Complainant’s MIGROS mark.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the contested domain name, <symetri.us>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the domain name that are cognizable under the Policy.
We begin by noting that there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <symetri.us> domain name. We conclude, therefore, that Respondent has no claim of rights to or legitimate interests in the domain name under Policy ¶ 4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum September 3, 2002), finding that, because there was no evidence showing that a respondent owned a trademark or service mark reflecting a specific domain name, it could not lay claim of rights to or legitimate interests in that domain name under Policy ¶ 4(c)(i).
We next observe that Complainant asserts, without objection from Respondent, that, for the first year of its existence, Respondent made no active use of the <symetri.us> domain name (a practice called “passive holding”). Because Respondent made no active use of the domain name, it cannot be said to have used it in connection with a bona fide offering of goods or services within the contemplation of Policy ¶ 4(c)(ii). See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018):
Inactive holding of a domain name does not qualify as a bona fide offering of goods or services ….
We also note Complainant’s further assertion, to which Respondent likewise does not object, that, on March 1, 2022, Complainant announced to the media that it would expand its business into the United States, and that shortly thereafter Respondent activated a website resolving from the domain name which website features “adult” content. In the circumstances here presented, we conclude that this use of the domain name is not a use in connection with a bona fide offering of goods or services within the contemplation of Policy ¶ 4(c)(ii). See, for example, Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017), finding that:
[u]se of a domain name to display adult-oriented images is not … a bona fide offering of goods or services or a legitimate non [-] commercial or fair use under the Policy.
We turn then to Complainant’s contention, which Respondent, once again, does not deny, that Respondent has not been commonly known by the challenged <symetri.us> domain name. In this connection we note that Respondent is here identified only as “Joshua Marcum,” which does not resemble the domain name. On this spare record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018), finding that a respondent was not commonly known by a domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel.”
Finally, under this head of the Policy, we have already observed that Respondent has recently activated a web page resolving from the disputed domain name which web page displays only “adult” content. On the facts before us, we may comfortably presume that Respondent receives revenue from the operation of this resolving web page, whether in the form of click-through fees or otherwise. We cannot but conclude, therefore, that Respondent is not “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue,” as provided in Policy ¶ 4(c)(iv). See, for example, Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017), cited supra.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence in the record before us, including the substantive identity between Complainant’s SYMETRI mark and Respondent’s <symetri.us> domain name, as well as the timing of Respondent’s recent activation of an “adult” content web page in the wake of Complainant’s announcement of its intent to commence operations in the United States, that Respondent knew of Complainant and its rights in the SYMETRI mark when it both registered and later actively employed the offending domain name. This confluence of circumstances adequately demonstrates Respondent’s bad faith in both registering and using the domain name as it has. See, for example, Twitch Interactive, Inc. v. Jason Hardwick, FA1501001601323 (Forum February 25, 2015) (finding that a respondent had engaged in bad faith within the meaning of Policy ¶ 4(a)(iii), where it registered the domain name <twitchtv.net> just two days after a mark-holder complainant’s public announcement of the launch of a service denominated TwitchTV). See also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum September 5, 2007) (finding that a respondent registered a domain name in bad faith as provided in Policy ¶ 4(a)(iii) where that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <symetri.us> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 9, 2023
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