SimpliSafe, Inc. v. Domain Sales - (Expired domain caught by auction winner) c/o Dynadot
Claim Number: FA2305002043385
Complainant is SimpliSafe, Inc. (“Complainant”), represented by Corsearch, Inc., Texas, USA. Respondent is Domain Sales - (Expired domain caught by auction winner) c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simplisafefastprotect.com>, registered with Dynadot 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on May 5, 2023; Forum received payment on May 5, 2023.
On May 5, 2023, Dynadot Inc confirmed by e-mail to Forum that the <simplisafefastprotect.com> domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot 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 May 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@simplisafefastprotect.com. Also on May 16, 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 June 9, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it was founded in 2006 and was a first company in the United States to offer professional grade monitored home security with no long-term contract to homeowners and has since grown to have 800+ employees, with offices in Boston, USA and Manchester, UK.
Complainant claims rights in the SIMPLISAFE mark based on its portfolio of registrations described below and extensive use of the mark in its security business.
Complainant argues that the SIMPLISAFE mark enjoys widespread consumer recognition and adds that it has spent millions of dollars in advertisement and promotion of its products and trademarks through marketing campaigns, social media, T.V., including on its website at <www.simplisafe.com>. As a consequence, Complainant submits that it has established significant goodwill and consumer recognition in the SIMPLISAFE mark.
Complainant first alleges that the disputed domain name is nearly identical and confusingly similar to its SIMPLISAFE mark, arguing that the relevant comparison to be made is between the second-level portion of the disputed domain name and the Complainant's mark. See Rollerblade, Inc. v. Chris McCready, WIPO Case No. D2000-0429 (finding that the top-level domain, such as ".net" or ".com", does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Furthermore, the disputed domain name incorporates the trademark SIMPLISAFE in its entirety and adds the generic words “fast” and “protect” together with the <.com> generic top-level domain (“gTLD”) extension.
Complainant argues that generally, panels have found that such changes are insignificant under a Policy ¶ 4(a)(i) analysis. 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).
Complainant adds that the addition of a generic term that relates to a complainant’s line of business can actually enhance confusion. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name, nor has it any trademark or intellectual property rights in the disputed domain name. The WHOIS record as revealed by the Registrar, shows Respondent is “Domain Sales - (Expired domain caught by auction winner) c/o Dynadot.” In such circumstances, without evidence to the contrary, the Panel should find that Respondent is not commonly known by the disputed domain name.
Where, as here, the WHOIS record provides no evidence that Respondent is commonly known by Complainant’s mark, a prima facie case exists that Respondent has no rights or interest in the disputed domain name. See, e.g., JA Apparel Corp. v. Katz, FA1608001689449 (Forum Sept. 25, 2016); UBS AG v. Key, FA1611001705029 (Forum Jan. 10, 2017) (finding respondent not to be commonly known by disputed domain name where WhoIs listed dissimilar name as registrant).
Complainant furthermore asserts that it is not affiliated with Respondent.
Moreover, Complainant has not licensed the SIMPLISAFE marks to Respondent, and Complainant has not granted Respondent any right, authorization, or permission to use Complainant’s SIMPLISAFE mark in a domain name or in any other capacity. Complainant argues that Respondent’s lack of authorization to use the SIMPLISAFE mark supports Complainant’s prima facie case that Respondent lacks rights in the disputed domain name.
Complainant submits that a "Cease and Desist" letter was sent to Respondent on October 20, 2022. The letter informed the Respondent that it was infringing on Complainant's IP rights and allowed the Respondent the opportunity to respond if they have any IP rights. The Respondent was provided with the information of the Complainant's trademark, hence showing proof that Complainant has rights to the brand. To date, no reply has been received from Respondent. 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, WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
Complainant adds that Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant notes that if the owner of the disputed domain name fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Name(s). See Mattel, Inc. v. RaveClub Berlin, FA106115 (Forum May 8, 2002), citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Referring to a screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint, Complainant submits that it shows that Respondent is offering to sell the disputed domain name for an excessive amount of US $4995 on the website. Complainant submits that a general offer for sale of a domain name may not qualify as a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Furthermore, Complainant argues that it is clear that Respondent is not making an active use of the domain name other than offering it for sale. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Next Complainant alleges that the disputed domain name was registered and is being used in bad faith.
Complainant argues that the disputed domain name was registered on September 19, 2022, which is significantly after the filing date of Complainant’s first United States trademark registration for SIMPLISAFE number 4747810 on October 14, 2014, and four days after Complainant filed is application for its SIMPLISAFE FAST PROTECT mark on September 15, 2022.
Furthermore, Complainant submits that the exhibited screen capture shows that the disputed domain name resolves to a website at <www.dan.com> on which it is offered to the general public for $4,995 USD, and argues that such amount is in excess of Respondent’s reasonable out-of-pocket costs associated with the domain name. Respondent’s offer to sell <simplisafefastprotect.com> for an amount exceeding its out-of-pocket cost for such domain name shows Respondent’s bad faith per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Market-place*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i).”).
Complainant contends that the exhibited screen capture shows that Respondent is using the disputed domain name <simplisafefastprotect.com> to lure internet users to the <dan.com> website where it is offered for sale at a profit over the costs associated with it. Respondent is clearly using it to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site, as described in Policy ¶ 4(b)(iv). This also is evidence of bad faith. Caffè Borbone S.r.l. v. Bruce Anderson, Claim No. FA2208002008848, (Forum Sept. 26, 2022) (“Respondent incorporates the entirety of Complainant’s CAFFE BORBONE mark in the disputed domain name to divert unsuspecting users to Respondent’s own webpage [offering the domain name for sale]. The Panel should find that Respondent uses the domain name with intent to divert and attract Internet users for commercial gain in bad faith pursuant to Policy ¶ 4(b)(iv).”)
Complainant adds that the disputed domain name so closely and specifically associated with Complainant’s mark which it incorporates verbatim, that the registrant must have had actual and/or constructive knowledge of Complainant’s mark, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). Respondent had knowledge of Complainant and its mark due to the fame of the mark SIMPLISAFE.
It is argued that Respondent clearly knew or should have known that its registration and continued use of the disputed domain name would give it substantial leverage in any negotiations with Complainant for a transfer of the domain name.
Furthermore, it is submitted that Respondent registered the disputed domain name <simplisafefastprotect.com> four days after Complainant filed its USPTO trade-mark application for SIMPLISAFE FAST PROTECT. The short interval between Complainant’s trademark filing and Respondent’s registration of <simplisafefastprotect.com> points to Respondent’s opportunistic bad faith under Policy ¶ 4(a)(iii).
Complainant argues that this timing of the registration of the disputed domain name is not a coincidence and indicates opportunistic bad faith pursuant to Policy ¶ 4(a)(iii). Previous panels have agreed with this suspicious timing argument. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website).
Complainant also submits that the registration of the disputed domain name prevents Complainant from registering and using this name itself.
Finally, Complainant submits that Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of security services to home owners under the SIMPLISAFE mark for which it owns a portfolio of registrations including the following:
· United States registered service mark SIMPLISAFE, registration number 4747810, registered on the Principal Register on June 2, 2015 for services in international class 45.
· United States registered trademark SIMPLISAFE, registration number 4865515, registered on the Principal Register on December 8, 2015 goods in international class 9;
· United States registered trademark SIMPLISAFE, registration number 5172986, registered on the Principal Register on March 28, 2017 for goods in international class 9;
· United States registered trademark SIMPLISAFE, registration number 5703463, registered on the Principal Register on March 19, 2019 for goods in international class 9;
· United States registered trademark SIMPLISAFE, registration number 5703463, registered on the Principal Register on March 19, 2019 for goods in international class 9;
· EUTM SIMPLISAFE, registration number 1254425 registered on April 9, 2015 for goods and services in international classes 9 and 45;
· EUTM SIMPLISAFE (stylized), registration number 1398172 registered on January 10, 2018 goods and services in classes 9, 42 and 45;
· International Trademark Registration SIMPLISAFE, registration number 1254425 registered on April 9, 2015 for goods and services in classes 9 and 45
· International Trademark Registration SIMPLISAFE (stylized), registration number 1398172 January 10, 2018 for goods and services in classes 9, 42 and 45.
Of relevance also is that Complainant holds a pending United States trademark application for SIMPLISAFE FAST PROTECT, which was filed at the USPTO ON September 15 2022.
Complainant has an established Internet presence and maintains a website at <www.simplisafe.com>.
The disputed domain name <simplisafefastprotect.com> was registered on September 19, 2019 and resolves to a third party website on which it is offered for sale to the public for USD$ 4,995.
There is no information available about Respondent except for that which is provided in the Complaint as amended, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name in the course of this proceeding. Respondent availed of a privacy service to conceal its identity on the published WHOIS. The Registrar confirmed that the registrant of the disputed domain name is recorded as being Respondent.
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”).
Complainant has provided convincing, uncontested evidence that it has rights in the SIMPLISAFE mark, established by the ownership of the portfolio of trademark registrations described above. Furthermore, the Complainant’s uncontested evidence is that the mark enjoys a protectable goodwill and widespread recognition among consumers because of its extensive use by Complainant in its home security business in the USA and the UK.
The disputed domain name <simplisafefastprotect.com>, consists of Complainant’s SIMPLISAFE registered trademark and service mark in its entirety in combination with the words “fast” and “protect”.
Complainant’s SIMPLISAFE r mark is the initial, dominant and only distinctive element in the disputed domain name.
The words “fast” and “protect” are generic and descriptive in context and in fact would be perceived as laudatory epithets in relation to Complainant’s services.
The inclusion of neither in the disputed domain name prevents a finding that the disputed domain name is confusingly similar to the SIMPLISAFE mark in which Complainant has rights
Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,
This Panel finds therefore that the disputed domain name is confusingly similar to the SIMPLISAFE mark in which Complainant has rights, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by the disputed domain name;
· Complainant has no trademark or intellectual property rights in the disputed domain name;
· the WHOIS record as revealed by the Registrar, shows Respondent is “Domain Sales - (Expired domain caught by auction winner) c/o Dynadot.”;
· Complainant is not affiliated with Respondent;
· Complainant has not licensed the SIMPLISAFE marks to Respondent;
· Complainant has not granted Respondent any right, authorization, or permission to use Complainant’s SIMPLISAFE mark in a domain name or in any other capacity;
· Respondent’s lack of authorization to use the SIMPLISAFE mark supports Complainant’s prima facie case that Respondent lacks rights in the disputed domain name;
· A "Cease and Desist" letter sent to the Respondent on October 20, 2022 informed Respondent that it was infringing on Complainant's IP rights, providing details, and allowed the Respondent the opportunity to respond if they have any IP rights, but Respondent failed to respond;
· Respondent has failed to respond to Complainant’s offer to resolve this dispute outside of this administrative proceeding and has failed to respond to this Complaint;
· The screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint, shows that Respondent is offering to sell the disputed domain name for an excessive amount of US $4995 on the website;
· Respondent is not making an active use of the domain name other than offering it for sale.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the SIMPLISAFE mark which predate the registration and first use of the disputed domain name on September 19, 2019.
It is most improbable that the disputed domain name which is composed of only the SIMPLISAFE mark and two descriptive terms “fast” and “protect” was chosen and registered without any knowledge of Complainant’s mark and its rights.
In this regard it is significant that four days after Complainant filed its still pending USPTO trademark application to register SIMPLISAFE FAST PROTECT.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant in mind.
The purpose of the registration is clear from the evidence that it was Respondent’s intention to sell the disputed domain name at a profit, because two and a half years after the disputed domain name was registered it is offered for sale for USD $4,995 and apparently is not being put to any active use.
By taking the step to allow the disputed domain name to resolve to the website on which it is offered for sale at that price constitutes use in bad faith for the purposes of the Policy, as it amounts to circumstances indicating that the disputed domain name as registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
In these circumstances this Panel additionally finds that the passive holding of the disputed domain name constitutes use in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <simplisafefastprotect.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 12, 2023
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