Flowserve Corporation v. Domain Admin / Ashantiplc Limited
Claim Number: FA1605001674825
Complainant is Flowserve Corporation (“Complainant”), Texas, USA. Respondent is Domain Admin / Ashantiplc Limited (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sihi.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.
Scott R. Austin, Professor David E. Sorkin, and Hector Ariel Manoff (Chairman) as Panelists.
Complainant submitted a Complaint to the Forum electronically on May 13, 2016; the Forum received payment on May 13, 2016.
On May 16, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <sihi.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 May 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 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 firstname.lastname@example.org. Also on May 20, 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.
A timely Response was received and determined to be complete on June 8, 2016.
Complainant’s Additional Submission was timely received on June 13, 2016 and Respondent’s Additional Submission was timely received on June 20, 2016.
On June 15, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed
Scott R. Austin as Panelist;
Professor David E. Sorkin as Panelist; and
Hector Ariel Manoff 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1- Complainant argues to hold a trademark registration for the SIHI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 696,375, registered Apr. 19, 1960), demonstrating rights in the mark.
2- Respondent’s <sihi.com> domain name is identical to the SIHI mark.
3- Respondent has no rights or legitimate interests because Complainant holds a trademark registration in a mark identical to the Disputed Domain Name.
4- Respondent registered and used the Disputed Domain Name in bad faith because Respondent’s primary purpose is to sell the domain back to Complainant in excess of out-of-pocket costs.
1- SIHI trademark registration is not in the name of Complainant but a different company and complainant has not submitted evidence of ownership.
2- Complainant has not asserted common law rights in the mark or any other evidence of reputation.
3- Respondent has rights and legitimate interests in the Disputed Domain Name. 4- Respondent obtained the domain in a competitive public auction of abandoned names.
5- Acronym and short generic domain names have significant utility and value for Respondent as a domain name reseller.
6- Respondent did not register or use the Disputed Domain Name in bad faith.
7- Complainant has not fulfilled its burden in demonstrating Respondent’s registration was motivated by the inherent value of the SIHI mark.
8- Complainant offered to purchase the Disputed Domain Name from Respondent for $10,000 prior to the initiation of this Proceeding.
9- “sihi” is a generic term which means “sweet” in the Kannada language. The Latinized script rendition of the Kannada word is "sihi".
C. Additional Submissions
1- “sihi” is neither a generic term with a commonly understood meaning nor a descriptive one.
2- Respondent’s potential uses of the “sihi” name are nothing more than after the fact justifications for its conduct.
3- Flowserver Corporation acquired SIHI Group B.V. in January 2015 and the acquisition included SIHI trademarks.
4- SIHI has been a world-class manufacturer of pumps for nearly 100 years.
5- The SIHI Group registered the Disputed Domain Name in 1995 and maintained that registration until recently.
6- During the acquisition of the SIHI Group and its transition the Disputed Domain Name renewal inadvertently lapsed.
7- Respondent acquired the Disputed Domain Name within hours of the expiration.
8- When “sihi” is searched on Google’s search engine, the entire first page (and most of the subsequent pages) refers to Complainant’s products.
9- Respondent should have been aware of Complainant’s rights in the SIHI trademark when it registered <sihi.com>.
1- Respondent acquired the Disputed Domain Name at a competitive auction 39 days after the expiration.
2- The Complainant’s SEC filing does not demonstrate ownership of the asserted trademarks.
3- Complainant has not demonstrated that the Respondent has registered or used the domain name for any purpose or intent relating to Complainant’s claimed mark.
Complainant owns SIHI trademark and commercializes pumps since 1920 with this trademark. Complainant owned <sihi.com> since 1995 and failed to renew it. Respondent acquired the Disputed Domain Name in an auction shortly after the expiration of the domain registration.
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.
Complainant alleges that it holds a trademark registration for the SIHI mark with the USPTO (Reg. No. 696,375, registered Apr. 19, 1960), and argues that this demonstrates rights in the mark.
Respondent points out that Complainant’s proffered trademark registration does not match how it has identified itself in this proceeding. (Reg. No. 696,375 is in the name of SIHI Group B.V.). However, this Panel finds that Complainant’s evidence submitted in the annex attached to the additional submission is sufficient to link the trademark rights with the Complainant. (Exhibit 1 and Exhibit 2, page 42). The Flowserve press release in Exhibit 1 identifies the corporate acquisition by Complainant of SIHI Group B.V. which is the same company listed as the final assignee in Respondent’s USPTO printout of the list of recorded owners of the mark (Exhibit A).
In addition, Complainant’s web site shows both the FLOWSERVE and SIHI marks side by side to sell pumps as well as web page devoted to the history of SIHI, including a reference to the acquisition in Complainant’s Annual Report showing its relationship to Flowserve that ties the two together in marketing and use of the mark.
Complainant’s submitted evidence has proved that Flowserve acquired SIHI Group B.V. and by acquiring the company they would have rights in the mark. See CEC Entertainment, Inc. v. Momm Amed Ia, FA0009000095740 (Forum Oct. 30, 2000) (“The Complainant’s trademarks and service marks, held by its wholly-owned subsidiary, ShowBiz Merchandising, Inc., consist of the words CHUCK E. CHEESE and CHUCK E. CHEESE’S. Respondent’s domain names "chuckiecheeses.com" and "chuckeecheese.com" are virtaully identical and confusingly similar to Complainant’s trademarks a and service marks.”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to Complainant’s mark "Beanie Babies").
Panel agrees that Complainant Flowserve Corporation is associated with the trademark registration offered at Complaint annex Exhibit 1 and has established rights in the mark under Policy ¶ 4(a)(i). Moreover, SIHI has been in use since the 1920’s by Complainant through its predecessor in interest and this Panel finds that there is evidence of use of SIHI trademark by Complainant which shows common law rights in the mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant also claims that Respondent’s <sihi.com> domain name is identical to the SIHI mark. As the “.com” generic top-level domain is the only addition to a fully incorporated SIHI mark, the Panel finds that <sihi.com> is identical to the SIHI mark under Policy ¶ 4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the <sihi.com> domain name, since it is not commonly known by the cited domain names. The WHOIS information corresponding to the domain name confirms this fact since Respondent bears no resemblance to the Disputed Domain Name (Exhibit 6). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
In addition, Respondent has embodied Complainant’s trade mark in the Disputed Domain Name, the Panel finds that Complainant has made out its prima facie case. The onus therefore is on Respondent to show that it has a right or legitimate interest in the Disputed Domain Name.
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove it has rights or legitimate interests in the Disputed Domain Names pursuant to Policy ¶ 4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
This Panel finds that Respondent has not submitted evidence to prove that Ashantiplc Limited is commonly known by the Disputed Domain Name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007).
Respondent argues that it acquired the Disputed Domain Name in an auction based on the fact that as a mere four-letter acronym, and as a short generic domain name, the disputed name has significant utility and value.
Respondent argues that “sihi” has a meaning "sweet" in the Kannada language and that the <sihi.com> domain name is comprised of a common term that has many other possible meanings apart from use in Complainant’s SIHI mark. Moreover, Respondent contends that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith.
This Panel finds that <sihi.com> is not a generic term domain name. The evidence filed by Respondent is not sufficient for the Panel, specifically when Respondent tries to show the trademark is not so distinctive: Respondent was able to mention only one other use of the term “sihi” in a pending application for US trademark registration filed in March of this year for ministry publications and services (Response Annex Exhibit D). It should be noted that Respondent in conducting its search of the USPTO records for the term “sihi” to obtain the result in its Exhibit D, would have found, as the Panel did in verifying that application through their own search of the USPTO records, that every other item in the 10 records displayed in the USPTO Trademark Electronic Search System involving the term “sihi” was a registration registered to Complainant through its predecessors in interest.
Thus, in this respect also, Respondent’s assertions fall short of the evidence the Panel would need to enable it to conclude that the Disputed Domain Name is a common, dictionary, generic or descriptive expression as Respondent asserted. See, e.g., Tejon Ranchcorp & Tejon Ranch Co. v. J & L Enters., FA524749 (Forum Sept. 20, 2005) (citing Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (where complainant has asserted that respondent has no rights or legitimate interests with respect to domain name, respondent must come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”). Moreover, Respondent must show it has rights or legitimate interests in respect of the domain name at issue by “concrete evidence.” See Kate Spade, LLC v. Darmstadter Designs, Case No. D2001-1384 (WIPO Jan. 3, 2002) (citing UDRP Policy 4(c), stating, “Concrete evidence” requires more than personal assertions; it requires documents or third-party declarations in support of such assertions.”) A failure to produce such concrete evidence entitles a panel to conclude that the respondent has no such rights or legitimate interest. See id. This addresses the evidentiary burden required of Respondent to rebut once the burden has shifted. We may also want to mention the decision to accept the additional submissions of both parties in the interests of justice was compelled to give balance to the expedited nature of the summary nature of a UDRP proceeding, where unlike traditional litigation, there is no discovery between the parties or disclosures of witnesses or documents for challenge until after each party's evidence has already been submitted to the tribunal.
Neither has Respondent submitted sufficient evidence of legitimate use based on its assertions with respect to the term “sihi” used in the possible alternative as an acronym. Even though Respondent submitted in its Annex several web page printouts suggesting “sihi” as a possible acronym, the real situation is that when a Google search is performed the top results referred only to Complainant’s trademark. The remote and speculative alternative uses of the term “sihi” merely suggested by Respondent for possible third party’s applications as Indian specialty dishes and local hospital acronyms are insufficient to outweigh the worldwide use of the term by an industrial pump manufacturer since the 1920’s. The Panel finds, therefore, that other than to identify Complainant’s goods and services, “sihi” is not an acronym distinctive enough for a potential purchaser to be willing to pay a high amount of money, certainly not distinctive enough that such limited alternate uses would support Respondent’s decision to spend $5,000 for the Disputed Domain Name. From the evidence presented for the purchase of the Disputed Domain Name both in timing (one day post prior registration lapse) and purchase price, it appears reasonable and more likely to the Panel, that Respondent performed the same Google search as the Panel in determining demand from potential users, hence value, and anticipated it would recover an amount in excess of its premium purchase price through a worldwide pump manufacturer with a registered mark seeking to reclaim its lapsed .com domain, than through a local Indian specialty chef, restauranteur, or local hospital seeking to use the domain as an acronym.
For this reason, Respondent’s arguments about having rights and legitimate interests in the Disputed Domain Name merely because Respondent is in the business of buying and selling generic domain names or acronyms are not accepted by the Panel.
Moreover, the Respondent’s argument about selling the Disputed Domain Name for such a high price because it was a valuable generic domain name is not accepted by this Panel. Respondent raises this argument of value apparently to justify its $100,000 asking price for the Disputed Domain Name, but then cautions the Panel to avoid comparing bid and asking prices lest the Panel become the “price arbitration board”. The Panel need not reach and does not accept Respondent’s framing of the question. Bad faith, supporting an illegitimate use, under policy requires only that the sale price is “in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name”. Policy ¶ 4(b)(i). No arbitration is required to determine that the Respondent’s $100,000 sale price is in excess of Respondent’s $5,000 out-of-pocket costs for the Disputed Domain Name.
Thus this Panel finds that Respondent was at best, “willfully blind” in failing to make a quick and simple enquiries to find out if SIHI belonged to third parties, including Complainant, a third party with multiple US trademark registrations and common law rights in its mark comprising the Disputed Domain Name. See Sumol+Compal Marcas, S.A. v. BuyDomains.com, D2013–0566 (WIPO Dec. 6, 2013) (“On the evidence provided, the Panel concludes that the Respondent was “willfully blind” in failing to make these enquiries . . . . Furthermore, while the Respondent may not have had actual knowledge of the Complainant, it would have been aware of the traffic that the Dispute Domain Name was generating at the time it decided to acquire the Disputed Domain Name. It would be implausible that a professional domain name trader such as the Respondent would not have reviewed traffic details and search engines results before valuing and acquiring the Disputed Domain Name”).
The evidence submitted by the Complainant proves that when contacted by Complainant, Respondent offered to sell the Disputed Domain Name for $100,000.00, which far exceeds the amount necessary to register the domain name. See Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant).
Additionally, <sihi.com> resolves from enaming.com and shows that the domain is for sale. Past panels have determined that a respondent lacks rights and legitimate interests where it attempts to sell a Disputed Domain Name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). For this reason, the Panel also concludes that Respondent lacks rights and legitimate interests in the Disputed Domain Name.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant claims that Respondent registered and used the Disputed Domain Name in bad faith because Respondent’s primary purpose is to sell the domain back to Complainant in excess of out-of-pocket costs.
Evidence submitted by both parties confirmed that Respondent was trying to sell the domain name in excess of out-of-pocket costs. This Panel finds Respondent acted in bad faith. See Bear River Mutual Insurance Company v. Dzone Inc., FA1311001528522 (Forum Dec. 11, 2013) (concluding that the respondent’s offer to sell the Disputed Domain Name to the general public and to the complainant in the form of counter-offers demonstrates the respondent’s bad faith registration and use of the Disputed Domain Name pursuant to Policy ¶ 4(b)(i)).
Respondent argues that the Disputed Domain Name was registered because it was a generic term and could be sold to different potential purchasers. Respondent alleges that “sihi” means “sweet” in Kannada language which has 50 million speakers. However, Respondent itself explained that the Latinized script rendition of the Kannada word is "sihi". The percentage of people who speak that language and can understand the word that does not appear in their proper script would not be high in the Panel’s opinion. It is not convincing the prize paid by Respondent for the domain name with respect to the chances of selling it.
In addition, Respondent argues that as a mere four-letter acronym the disputed name has significant utility and value and gives example of potential meanings for the acronym. However, this Panel considers that this argument is not consistent enough to prove good faith in its registration.
This Panel considers that the evidence and lack of explanation about the actual intent in its choice and registration of the disputed domain name is not sufficient to support Respondent’s position or to outweigh the implication that Respondent focused on obtaining value from the disputed domain name by selling it to the holder of a longstanding multiple registration mark it incorporated which topped the Google search results for the term “sihi”. This evidence, with only speculative assertions by Respondent on alternate uses to refute it, is sufficient for this Panel to find actual knowledge of Complainant’s mark in Respondent’s purchase of the disputed domain name and that knowledge as the more likely reason for Respondent’s purchase.
Moreover, if the Respondent is in the domain name business it should at least perform a quick search of the domain name before having acquired it, which would have shown multiple results linking Complainant’s mark and goods and Respondent would have noticed that Complainant is in the market selling goods identified by this mark since the 1920’s.
From the evidence submitted from both parties it cannot be determined the exact date of the registration of the Disputed Domain Name by the Respondent. However, it is clear that the registration happened no later than 40 days following the lapse expiration of Complainant’s registration in the Disputed Domain Name. (Exhibit B of Respondent’s Additional Submission). Moreover, the predecessor domain trading company that registered the domain name before Respondent acquired it at the auction did so just after the expiration date, as noticed from the current expiration date December 19, 2017 (Exhibit 6 of Complainant’s evidence), just one day after the prior expiration (December 18, 2015, Exhibit 5 of Complainant’s evidence). In addition, it is very clear that the purchase of the disputed domain occurred decades after Complainant acquired rights in and registered its mark, giving Respondent constructive as well as actual notice of Complainant’s registered mark SIHI. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
This Panel finds that the purchase shortly after the lapse of the domain rights in Complainant is evidence of bad faith. See Edfinancial Services, LLC v. Above.com Domain Privacy, FA1310001524576 (Forum Nov. 15, 2013):
Secondly, Complainant next alleges that it previously owned the <edfinancil.com> domain name and that Respondent only registered the Disputed Domain Name after Complainant inadvertently allowed its registration of the domain name to lapse. Specifically, Complainant states that Respondent registered the Disputed Domain Name on April 9, 2009, ‘a little over a year after Complainant’s rights to the domain name inadvertently lapsed.’ See Complaint, at 8; see also Edfinancial Services LLC v. Texas Int’l Prop. Ass. - NA NA, FA 1111923 (Forum Jan. 29, 2008) (ordering the transfer of the <edfinancil.com> domain name from a third party to Complainant). The Panel notes that in InTest Corp. v. Servicepoint, FA 95291 (Forum Aug. 30, 2000), the panel stated, ‘where the domain name has been previously used by the [c]omplainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.’ The Panel similarly reasons that in the absence of a Response, Respondent’s registration of the <edfinancil.com> domain name that was previously held by Complainant indicates Respondent’s bad faith pursuant to Policy ¶ 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 <sihi.com> domain name be TRANSFERRED from Respondent to Complainant.
Hector Ariel Manoff (Chairman) and Scott R. Austin
Dated: July 12, 2016
Professor David E. Sorkin, Panelist, dissents
I respectfully dissent. While the Disputed Domain Name is identical to a mark in which Complainant appears to have rights, Complainant did not present any evidence of its trademark rights prior to its Additional Submission, and for the reasons set forth below I do not think that the Additional Submission ought to have been considered by the Panel. In addition, I do not think that Complainant has met its burden of proving that the Disputed Domain Name was registered and is being used in bad faith.
The Panel's task has been made unnecessarily difficult by inadequacies in both parties' submissions. While parties ordinarily are to be commended for keeping their submissions succinct, the Complaint took brevity to an extreme, providing the Panel with four sentences of allegations that for the most part just restate provisions of the Policy, and appending a copy of a trademark registration held in the name of a third party. Complainant waited until its Additional Submission to disclose numerous matters of likely relevance, among them the connection between Complainant and the trademark registrant; the extent of recognition of the mark; the fact that the Disputed Domain Name was previously registered to the trademark registrant; and the correspondence between Complainant and Respondent's agent, including Complainant's purchase offer and Respondent's counteroffer. All of these could and should have been included in Complainant's initial submission.
Paragraph 12 of the Rules confers upon the Panel the sole discretion to decide whether to receive supplemental material from the parties, and a Panel should consider such material only in exceptional circumstances, such as where the material reflects newly discovered evidence or rebuts arguments that could not reasonably have been anticipated. See, e.g., Valeant International Bermuda v. DNS Administrator, FA 1573544 (Forum Sept. 15, 2014); Town of Easton Connecticut v. Lightning PC Inc., FA 1220202 (Forum Oct. 12, 2008); America Online, Inc. v. Adrian Paul Miles d/b/a AD2000D.com, FA 105890 (Forum May 31, 2002). In my view, the Panel should disregard Complainant's Additional Submission, at the very least as to material that ought to have been included in the Complaint.
Respondent has also been less than forthcoming with the Panel. The Policy imposes upon a domain name registrant an obligation to participate in proceedings brought thereunder, and adverse inferences may arise from a party's failure to do so. In this case, Respondent registered the domain name through a privacy registration service, presumably to conceal its identity; and even after the privacy shield was lifted by the registrar, the only information about Respondent in the present record is its business name and a Hong Kong address that appears to be a mail drop. Furthermore, Respondent has not testified as to its actual reasons for selecting the Disputed Domain Name. The Response recites various grounds on which the domain name might be considered have value, but conveniently fails to mention whether Respondent was aware of or motivated by any of these grounds, or even whether Respondent was aware of the corresponding trademark when it acquired the domain name. Both Respondent and its counsel have substantial experience in defending claims brought under the Policy, and I am inclined to draw adverse inferences from the gaps in Respondent's submissions. Admittedly a self-serving declaration would be of relatively little probative value, but its absence is telling.
Complainant bears the burden of proving each of the elements required by paragraph 4(a) of the Policy. In particular, to show bad faith under paragraph 4(a)(iii), the evidence must show that Respondent's registration of acquisition of the domain name was specifically targeted at Complainant or its mark. See, e.g., Juraj Králik-ZAJO v. Deep Frontier, Jay Dove, D2015-1377 (WIPO Oct. 20, 2015); Vanity Shop of Grand Forks, Inc. v. Domain Administrator / Vertical Axis Inc., FA 1595932 (Forum Jan. 20, 2015).
Respondent's position appears to be that its reason for acquiring the Disputed Domain Name could have been its inherent value, either as a four-letter ".com" domain name or on other grounds unrelated to the trademark sense of "sihi." Respondent presented evidence that "sihi" does have meanings unrelated to Complainant's mark, and that the price Respondent paid for the Disputed Domain Name is within the general range within which four-letter ".com" domain names commonly trade. It seems likely that <sihi.com> would have a greater value than unpronounceable domain names or those comprised of less common letters, and Respondent's $100,000 counteroffer was likely just a negotiating strategy. Yet neither party presented compelling evidence of the predominance of either the trademark sense of "sihi" or of other senses of the term. The top several Google search results for "sihi" refer to Complainant's mark, as the majority notes, but many of the results on the following pages are unrelated to the mark. The Panel should not be compelled to do its own research on such an important point, and in my view Respondent's position is at least plausible.
Yet I am skeptical of Respondent's claim that it was concerned only with the non-trademark value of the domain name. Respondent could easily have provided the panel with information relating to its reasons for acquiring the Disputed Domain Name. It is reasonable to expect a party to come forward with evidence uniquely within its knowledge and control. See, e.g., Kapalua Land Co. v. Orbiculate.com c/o Marco Stocchi, FA 1222536 (Forum Oct. 27, 2008). Nonetheless, based upon the present record I think it is at least as likely that Respondent chose to acquire the Disputed Domain Name because of its non-trademark value (most likely, as a pronounceable four-letter ".com" domain name containing four common letters) as that the decision was targeted at Complainant or its mark. I would therefore find that Complainant has not met its burden of proving bad faith.
David E. Sorkin, Panelist
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