Alcohol Monitoring Systems, Inc. v. Peter Stranney
Claim Number: FA1303001488482
Complainant is Alcohol Monitoring Systems, Inc. (“Complainant”), represented by Fred Beck, Colorado, USA. Respondent is Peter Stranney (“Respondent”), represented by Mathew Brown of UDRP POLICE DBS, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The Domain Name at issue is <scram.com>, registered with Dynadot, 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.
Mr. Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2013; the National Arbitration Forum received payment on March 4, 2013.
On March 5, 2013, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <scram.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 March 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2013 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 firstname.lastname@example.org. Also on March 6, 2013, 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.
A timely Response was received and determined to be complete on March 25, 2013.
On April 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Hugues G. Richard as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
The Complainant owns the registered Trademarks SCRAM and SCRAMx with the United States Patent and Trademark Office (Reg. No. 2,902,677), registered November 16, 2004 (“the Trademark”). The Complainant submits that the Respondent’s domain name <scram.com> (“the Domain Name”) is confusingly similar to its Trademark (Policy ¶ 4(a)(i)).
The Complainant submits that the Domain Name is not used in connection with products, services or goods, bona fide or otherwise. The Complainant insists that the Domain Name is not a functioning site but a sample Word Press site, not active, not used as a commercial website, and only hosted as a place holder. Accordingly, the Complainant submits that the Respondent does not make any legitimate use of the Domain Name (Policy ¶ 4(a)(ii)).
The Complainant asserts that the Domain Name has been registered in bad faith following the Respondent’s offer to sell the domain name for an amount of $40,000 to the Complainant pursuant to an invitation to sell the Domain Name (Policy ¶ 4(a)(iii)). According to the Complainant, this offer grossly exceeds registration costs and the appraisal value, thereby demonstrating the Respondent’s use in bad faith.
As such, the Complainant asserts that it has satisfied all three elements of the Policy.
The Respondent does not oppose the fact that the Domain Name is identical to the Complainant’s Trademark. However, he insists that the name in dispute, SCRAM, whether it is described as a trademark or a domain name, is a generic term and therefore, its use should not be exclusive to the trademark holder. In other words, the Respondent asserts that the confusion created between the Complainant’s Trademark and the Respondent’s Domain Name is simply a natural consequence of registering a generic domain name.
The Respondent refutes all of the Complainant’s arguments and claims that he does have legitimate interests in the Domain Name under Policy ¶ 4(a)(ii). The Respondent relies on his sworn statement (Annex 1), business plan (Annex 2), and examples of other SCRAM trademarks in the UK (Annex 3) to demonstrate his rights and legitimate interests in the Domain Name.
Having regard to the Complainant’s argument as to the Respondent’s registration in bad faith of the Domain Name under Policy ¶ 4(a)(iii), the Respondent directs the Panel to the fact that it was the Complainant who instigated the offer to buy the Domain Name (See Annex 4). Moreover, the Respondent has provided evidence that generic domain names are often transferred at significant value (See Annex 5).
The Respondent submits that he cannot have registered the Domain Name in bad faith, considering that he was not aware of either the Complainant or its Trademark. The Respondent asserts that the Complainant’s reputation does not extend to the UK. In any event, the Respondent states that he has the right to sell a generic domain name where there is no evidence of targeting or malicious intent at the time of registration. The Respondent insists that the Domain Name has not been used to tarnish or compete with the Complainant’s Trademark and business.
The Respondent further submits that the Panel should make a finding of Reverse Domain Name Hijacking against the Complainant.
The Complainant Alcohol Monitoring Systems, Inc. is an American company, specializing in the monitoring of alcohol offenders via the SCRAMnet software processes. SCRAM is the acronym for “Secure Continuous Remote Alcohol Monitor” for the alcohol monitoring program that the Complainant markets and claims to manage in the USA, Canada, UK and Australia. This claim is however contradicted with respect to the UK, since the Complainant declares in its Complaint that it intends to do business in the UK.
Both SCRAM and SCRAMx are registered US trademarks of the Complainant. The Complainant has provided documentary evidence to this effect and is not opposed by the Respondent.
The Complainant also provided evidence that the Domain Name is currently actively listed on a Domain Name Auction site.
The Respondent Peter Stranney is the sole owner of the business and Domain Name <scram.com> and located in the UK. The Respondent has experience in web development and online marketing. In January 2007, the Respondent acquired the Domain Name for US$6,000.
The Respondent is currently in full-time employment. In May 2013, he plans to leave his position to focus on his SCRAM travelling business for a possible launch in August/September 2013.
The Respondent’s materials contain a sworn statement (Annex 1), a business plan dated November 1, 2012 (Annex 2), examples of other SCRAM trademarks in the UK (Annex 3), correspondence with the Complainant (Annex 4), and documented history of third-party Domain Name sales (Annex 5).
Particularly, Annex 4 reveals that there was a telephone discussion between the parties in January 2013 for the transfer of the Domain Name where the Complainant invited the Respondent to make an offer. The Respondent offered to transfer the Domain Name for the amount of US$40,000. This offer was rejected by the Complainant. The Complainant ended the negotiations by communicating to the Respondent that it would file the present Complaint.
For the reasons that follow, the Panel finds that the Complainant’s claim is denied. Specifically, the Complainant has not satisfied Policy ¶ 4(a)(ii) and ¶ 4(a)(iii).
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.
The Respondent does not oppose the Complainant’s claim on this ground. The evidence demonstrates that the Complainant owns a valid registered Trademark that is identical and/or confusingly similar to the Domain Name. It is sufficient for the Complainant to demonstrate a registered trademark in a jurisdiction other than where the Respondent operates (See Koninklijke KPN N.V. v.. Telepathy Inc., D2001-0217 (WIPO May 7, 2001)). Policy ¶ 4(a)(i) is met in favor of the Complainant.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interest in the disputed Domain Name under Policy ¶ 4(a)(ii). The burden now shifts to the Respondent to show that he does have rights or legitimate interests in the Domain Name (See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
In view of the evidence, the Panel holds that the Respondent has met his burden and demonstrated that he has rights or legitimate interests in the Domain Name following Policy ¶ 4(a)(ii) and ¶ 4(c). The Respondent has demonstrated before any notice of the present dispute that he had made preparations to use the Domain Name in connection with a bona fide offering of goods or services. Annex 2 of the Respondent’s materials reveals that <scram.com>’s purpose is to offer UK businesses the opportunity to advertise goods and services for people wishing to travel to a particular destination within the UK. The business plan provides details as to the Respondent’s preparation to use the Domain Name in connection with that purpose. Such a demonstration is sufficient to establish a legitimate interest in the disputed Domain Name (See Jolt Co. v. Digital Milk, Inc., D2001-0493 (WIPO Aug. 1, 2001)).
Therefore, the Complainant’s claim fails on this ground.
Since the Complainant has failed to meet Policy ¶ 4(a)(ii), the Panel is not required to consider the Complainant’s argument under Policy ¶ 4(a)(iii) and ¶ 4(b) (See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005). Nevertheless, the Panel will consider those arguments.
The Panel finds that the Complainant has failed to demonstrate any intention of bad faith of the Respondent. SCRAM is a generic term, meaning “to go away quickly.” Transferring such a generic domain name for value is not bad faith unless the registration was undertaken with the intent of selling it to the Complainant or its competitor (See Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb. Forum Aug 5, 2002)). There is no evidence that this was indeed the case.
Moreover, Annex 5 of the Respondent’s materials explicitly provides many examples of generic domain names transfered or sold for significant value. These generic domain names possess an intrinsic value that, for all intents and purposes, exceeds the costs of registration. Accordingly, SCRAM is also a generic term whose intrinsic value can go beyond that of its registration costs. From this, it goes without saying that where a Domain Name is a generic term, an offer to transfer the domain name at a price higher than the costs incurred for registration does not necessarily lead to bad faith. Furthermore, in this case, the Respondent did not initiate the discussions for the sale of the Domain Name; it is rather the Complainant who did.
The Panel also finds that the Respondent’s use of the Domain Name was not primarily for the purpose of selling the Domain Name, considering the business plan prepared by the Respondent.
As such, this ground of the Complaint is also dismissed.
Reverse Domain Name Hijacking
The Panel finds that there was no Reverse Domain Name Hijacking in this case. The evidence does not demonstrate that there was harassment or similar conduct by the Complainant in lieu of the knowledge of the Respondent’s rights or legitimate interests in the Domain Name (See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002)). While the Complainant may have had knowledge of the Respondent’s rights, the evidence does not suggest that any type of harassment or similar conduct has occurred. Therefore, the Respondent’s request for a finding of Reverse Domain Name Hijacking is dismissed.
Based on the preponderance of evidence, the Panel finds that the Complainant has not established all three elements required under the ICANN Policy. Therefore, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <scram.com> domain name REMAIN WITH the Respondent.
Hugues G. Richard, Panelist
Dated: April 11, 2013
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