Charles A. Saunders / Saunders Archery Company v. Lisa Katz / Domain Protection LLC
Claim Number: FA1704001727959
Complainant is Charles A. Saunders / Saunders Archery Company (“Complainant”), represented by Bruce H. Brodkey of Brodkey, Peebles, Belmont & Line, LLP, Nebraska, U.S.A. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), Texas, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <saundersarchery.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2017; the Forum received payment on April 20, 2017.
On April 21, 2017, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <saundersarchery.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 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2017 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 2, 2017, 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 May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 is in the business of promoting archery products and has established rights in the SAUNDERS mark by registering that mark with the United States Patent and Trademark Office (“U.S.P.T.O.”) in furtherance of its business. Complainant argues that Respondent’s <saundersarchery.com> is confusingly similar to Respondent’s SAUNDERS mark because the disputed domain name incorporates the mark in its entirety and adds the term “archery” which is a description of the business that Complainant is engaged in—along with the “.com” generic top-level domain (“gTLD”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent does not conduct any business associated with archery or in affiliation with Complainant.
Complainant argues that the disputed domain name was registered in bad faith because Respondent registered the disputed domain name for the purpose of selling, renting or otherwise transferring the domain name; Respondent registered the disputed domain name to prevent the owner of the mark from reflecting the mark in a corresponding domain name; Respondent registered the domain name to disrupt the business of Complainant and, finally, Respondent is using the disputed domain name to create a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement.
Respondent failed to submit a Response in this proceeding.
As Complainant has failed to carry its burden, the Panel finds that the complaint shall be denied.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the 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, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that the disputed domain name is confusingly similar with Complainant’s valid and subsisting trademark. Complainant has adequately pled its rights and interests in and to the trademark SAUNDERS. Respondent arrives at the disputed domain name by merely appending the generic word “archery” and adding a g TLD “.com.” This is insufficient to distinguish the disputed domain name from Complainant’s registered trademark.
As such, the Panel finds that the disputed domain name is substantially similar to Complainant’s trademark.
However, even though the disputed domain name is confusingly similar, the Complainant has failed to carry its burden regarding the element of rights or legitimate interests. Complainant alleges that Respondent has no rights or legitimate interests because Respondent does not conduct business in the archery field, as Complainant does. As Respondent has failed to respond to this complaint, the Panel must take as true all reasonable assertions made by Complainant. However, even if true, Complainant’s assertions do not satisfy its burden of demonstrating that Respondent lacks rights or legitimate interests in and to the disputed domain name.
In a complaint under the UDRP, the issue is not how Respondent used the disputed domain name but when they registered it. Complainant adequately establishes that its rights in this matter are based on a valid and subsisting registration for the trademark SAUNDERS. This trademark was registered on June 29, 2010. Complainant may have common law rights in and to that trademark but if fails to allege any.
Further, Complainant fails to allege that its trademark registration or usage commenced prior to Respondent’s registration of the disputed domain name. No WHOIS information is provided. Even if the Panel were to grant judicial notice that Complainant’s alleged use from 1962 was adequate to establish common law rights in the mark (and the Panel refuses to do so), nowhere in the complaint are there any allegations that Complainants registration or use predated Respondent’s registration of the disputed domain name.
Complainant also fails to make any allegations regarding whether Respondent is commonly known by the disputed domain name and whether Respondent is fairly using the disputed domain name.
As such, the Panel finds that Complainant has failed to carry its burden regarding this element.
Complaint also fails to carry its burden regarding bad faith. Complainant makes several allegations that it concludes demonstrates bad faith; however, Complainant offers no evidence of this alleged bad faith. Again, as the Respondent failed to respond to this complaint, the Panel should take as true all reasonable allegations of Complainant. It would be unreasonable for the Panel to accept as true Complainants unsupported allegations of bad faith.
As such, the Panel finds that Complainant has failed to carry its burden regarding this element as well.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <saundersarchery.com> domain name remain with Respondent.
Kenneth L. Port, Panelist
Dated: May 31, 2017
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