John Klanian, President Symbol of Love, LLC v. NULL NULL / THIS DOMAIN IS FOR SALE
Claim Number: FA1609001694475
Complainant is John Klanian, President Symbol of Love, LLC (“Complainant”), represented by Krista K. Stone of McInnes & McLane, LLC, Massachusetts, USA. Respondent is NULL NULL / THIS DOMAIN IS FOR SALE (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <symboloflove.com>, registered with eNom, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 20, 2016; the Forum received payment on September 20, 2016.
On September 21, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <symboloflove.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 September 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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 September 22, 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 October 21, 2016, 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 SYMBOL OF LOVE. Complainant held a national registration for that expression but inadvertently allowed it to lapse whereupon it re-registered the trademark but with a new priority date postdating the registration date of the disputed domain name. Complainant submits that the disputed domain name is either identical or confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the same name; the domain name has not been used and is offered for sale.
Complainant alleges that Respondent registered the disputed domain name in bad faith. It refers to negotiations between the parties for purchase of the disputed domain name where agreement over (escalating) price could not be reached.
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant registered the trademark SYMBOL OF LOVE with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 2,076,068. The application for registration was made with the USPTO on December 16, 1994 and the trademark was registered on July 1, 1997. It claimed a date of first use of the trademark in commerce of November 15, 1995 (“the 1997 Registration”);
2. the disputed domain name was registered on January 13, 2000;
3. the 1997 Registration lapsed on April 3, 2004;
4. on May 17, 2005 Complainant refiled for registration of the trademark which then issued as USPTO Reg. No. 3,548,215, registered December 16, 2008, this time claiming a date of first use in commerce of September 26, 2008 (“the 2008 registration”);
5. the domain name is not in use, nor is there any evidence it has been used in the past; and
6. Complainant approached respondent to purchase the domain name. Respondent initially asked for USD10,000 and Complainant counter-offered $600. Later, Complainant approached Respondent again and offered $2,000 but Respondent countered with $68,800 indicating another (unnamed) party was also interested.
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.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration with the USPTO, a national trademark authority. For the purposes of paragraph 4(a)(i) of the Policy, it is immaterial that the 1997 Registration lapsed and that the trademark was reregistered later by way of an application made to the USPTO after the date of registration of the domain name. Paragraph 4(a)(i) requires only an extant registration; matters of timing are left to the other aspects of the Policy (see, for example, AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) holding that the UDRP Policy does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but that fact may prevent a finding of bad faith under Policy ¶ 4(a)(iii)).
The disputed domain name differs from the trademark simply by addition of the gTLD, “.com”. The Panel finds the domain name to be legally identical to the trademark (see, for example, Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also, Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“… the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”)).
Panel therefore 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
(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, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The publicly available WhoIs information for the domain name registrant does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights and the domain name is not in use. Further, the domain name is (by implication) for sale.
A prima facie case has been made (see, for example, Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
In the absence of a Response, 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 used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the 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.’
On the evidence Panel find that none of the scenarios described by paragraphs 4(b)(i)–(iv) apply. Paragraphs 4(b)(ii)–(iv) are clearly inapplicable and no reasonable inference can be drawn from the facts that Respondent was primarily actuated in the way described by paragraph 4(b)(i). Accordingly, both registration and use in bad faith must be shown as separate matters.
The implication made by the Respondent’s name that the domain name is for sale is not, of itself, proof of bad faith. Nor is the evidence that Respondent asked a substantial amount for the domain name, without more, proof of bad faith use. Complainant has not raised an argument of “passive holding” nor, indeed, provided the factual support for such an argument to succeed were it argued. The trademark is not well known. There is no claim to a common law reputation in the trademark. There is no evidence of ongoing continuous use of the trademark. The dates of first use in commerce claimed by the 1997 Registration and the 2008 Registration are inconsistent and in the latter case postdate the registration date of the domain name. Panel finds that there is no evidence of use in bad faith.
With that finding the Complaint fails but Panel adds without further discussion that there are reasons why the Complaint would have also failed for failure to prove to the requisite standard that the domain name was registered in bad faith.
Having failed to establish one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <symboloflove.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: November 1, 2016
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