S S Industries, LLC D/B/A Salter Spiral Stair v. Lisa Katz / Domain Protection LLC
Claim Number: FA1512001654492
Complainant is S S Industries, LLC D/B/A Salter Spiral Stair (“Complainant”), represented by Steven L. Rinehart of Western IP Law, Utah, United States. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <salterspiralstairs.com>, registered with Fabulous.com Pty Ltd.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 29, 2015; the Forum received payment on December 31, 2015.
On January 3, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <salterspiralstairs.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 January 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2016 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 email@example.com. Also on January 5, 2016, 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 January 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
Complainant asserts trademark rights in SALTER SPIRAL STAIR and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant has used the trademark SALTER SPIRAL STAIR in connection with its business of designing and making spiral staircases;
2. The disputed domain name was registered on January 30, 2005;
3. The domain name redirects Internet traffic to <searchnet.com> which then redirects that traffic to third party websites such as that of Century 21, real estate brokers; and
4. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. In this case there is no evidence that Complainant has such a registration. Instead, it asserts common law trademark rights by reason of use of the trademark since 1979. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Annexed to the Complaint are contemporary screenshots of Complainant’s website, magazine articles, a catalog of Complainant’s products, and a business card of Complainant’s personnel. That material is insufficient to show common law trademark rights (see http://www.wipo.int/amc/en/domains/search/overview2.0).
On February 8, 2016, pursuant to paragraph 12 of the Rules, Panel caused an Order for Additional Submissions to be sent to Complainant whereby Complainant was requested to provide no later than February 19, 2016:
1. Further and better particulars of its claim to a common law trademark, especially by way of … annual turnover figures from 1979 to 2005.
2. Further and better particulars as to why these proceedings are brought now when the disputed domain name was registered in 2005.
Complainant responded in a timely manner to that request. In response to question 1 Complainant explained that it only kept detailed sales records for twelve years. The earliest records are from 2004. They show a substantial turnover for that year. There is no proof of use of the trademark going back to 1979 when it is claimed that it was first used. Instead there is an assertion of continuous and substantial sales “since the early-1990s.”
Documented turnover from 2005 to present is substantial and is shown to slowly escalate, year on year. Panel finds that Complainant has established common law trademark rights.
Complainant argues that the domain name is confusingly similar to the trademark because the addition to the trademark of gTLD “.com” and the pluralization of the word “stair” to “stairs” are trivial differences, which do not dispel the similarity of the compared terms. Panel is in full agreement with that submission and finds the domain name to be confusingly similar to the trademark. See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding <nationalgeographics.com> confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness under Policy ¶ 4(a)(i)).
Panel is satisfied that the disputed domain name is confusingly similar to Complainant’s trademark and so Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “Lisa Katz / Domain Protection LLC” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark. Further, the evidence is that the disputed domain name redirects Internet traffic to <searchnet.com> which, in turn, redirects traffic to the website of certain real estate brokers. When Panel made the same exercise, it was on that occasion redirected to other miscellaneous sites unconnected with Complainant’s business. That use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, the prima facie case against Respondent is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
That said, paragraph 4(b) of the Policy lays out four circumstances which are to be understood as registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel agrees with Complainant’s submission that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain name to be confusingly similar to Complainant’s trademark. Complainant submits evidence of screenshots of the web page resolving from the disputed domain name. Panel accepts as plausible and likely Complainant’s suggestion that Respondent benefits financially in some way from the re-routing of Internet traffic to commercial websites. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website or other on-line locations, by creating a likelihood of confusion with Complainant’s trademark.
As explained above, paragraphs 4(b)(i) – (iv) are per se examples of bad faith. In so far as paragraph 4(b)(iv) requires only proof of use in bad faith, it has been satisfied on the facts and that is dispositive of the matter. Nevertheless, it is sometimes said that paragraph 4(b)(i) - (iv) should not be applied in the face of contrary evidence of good faith and in this case questions do arise from the fact that the domain name was registered over a decade ago.
Responsive to question 2 of the Panel Order for Additional Submissions, Complainant made extended submissions on laches and why such equitable principles do not apply to the Policy. Panel has in other places expressed its opinion on that matter. In this case the focus is not on possible disentitling conduct by Complainant as it is the forensic uncertainties attaching to the assessment of Respondent’s bona fides ten years after the time of registration of the domain name.
Panel found Complainant to have common law trademark rights for the purposes of paragraph 4(a)(i) of the Policy. Complainant need only show such rights at the time of the filing of the Complainant. In response to the Panel Order, Complainant did so. On the other hand, Complainant’s reputation in the trademark in January 2005 when the domain name was registered is largely undocumented and Complainant’s assertion that it was “well known” by 2005 is unclear on the evidence.
The question is whether it can reasonably be inferred that Respondent knew of and targeted the trademark in January 2005. Had the trademark been more generic, Complainant might have faced difficulties but Panel can find no easy explanation for Respondent’s choice of a domain name almost identical to a trademark which has a level of inherent distinctiveness.
Panel finds registration and use in bad faith and the third limb of the Policy established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <salterspiralstairs.com>, domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: February 21, 2016
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